Under the Copyright, Designs and Patents Act 1988, design rights do not subsist in:

Construction methods or principles of construction; Features of shape or configuration which enable the article to be connected to or fit with another article so that either article may perform its function (known as the "must fit" exclusion); Features of shape or configuration which are dependent upon the appearance of another article of which the article in question is intended by the designer to form an integral part (known as the "must match" exclusion); or Surface decorations. Qualtex admitted copying the designs, but claimed it was entitled to do so for the following reasons:

Many of the designs were copied from Dyson`s earlier designs and were thus unoriginal; The "must fit" exception applied to large parts of the designs; The "must match" exception applied to significant parts of the designs; Parts of the designs which were not otherwise excluded were commonplace; Some aspects were surface decoration; and The dates of pre-production orders accepted on the basis of prototypes of the vacuum cleaners should form the start date in calculating the period of design right protection. The Court ruled that:

Although some of the designs had been based on Dyson`s prior designs, they were original;

The must match exclusion only applies if an alteration in the shape of the relevant design aspect would make the overall article radically different in appearance;

Any means of achieving a fit or connection between two articles will be excluded from unregistered design rights, even though other designs might achieve the same effect, and that an interface will be excluded from unregistered design rights, protection even if it has an additional function other than achieving a fit or connection between two articles; "Commonplace" was not to be confused with lack of novelty; and The distinction between surface decoration and the overall shape and configuration of a product may be a matter of fact and impression, or a value judgement.

Comment: Many spare parts manufacturers supply copies of parts for complex products in the belief that the `must fit` and `must match` exceptions to unregistered design rights will protect them from litigation. As this judgment shows, this can no longer be taken for granted. Manufacturers of spare parts may have to adapt their operations substantially to avoid legal challenges based on the findings in this recent case.

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© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.