Design in UK Law

Here the judge was diverted to certain difficult questions arising as to substantiality in copyright infringement which may have no relevance to design right infringement.

PMS contends that the design corpus includes all designs which qualify as prior art under Article 7(1) of the Regulation and are not excluded by either the obscure designs exception or the confidential disclosures exception. Magmatic disputes this, and contends that the design corpus consists of the designs with which the informed user is likely to be familiar.

But upon registration of a design specifying class A as the intended class of products, it becomes unlawful to use the design for products in class D without the consent of the holder of the registered design. He is well aware of the old design, but has not used or prepared to use it yet, although all his competitors have. But why should he not use an old and well-known design within his own field of operation?

"This means that the proprietor can trim his design right claim to most closely match what he believes the defendant to have taken. The defendant will not know in what the alleged monopoly resides until the letter before action, or, more usually, the service of the statement of claim. This means that a plaintiff's pleading has particular importance. It not only puts forward the claim but is likely to be the only statement of what is asserted to be the design right."

The House of Lords decided in Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 that the question of substantiality is a matter of quality rather than quantity. That question, as it seems to me, must be answered by reference to the reason why the work is given copyright protection. It follows that the quality relevant for the purposes of substantiality is the literary originality of that which has been copied.

It seems to us that the Judge has in effect come to the conclusion that in the field of furniture all that is needed to qualify as a work of artistic craftsmanship is a sufficient originality of design to qualify as a design under the Designs Act. It seems to us to give no sufficient effect to the word "artistic" in the definition in the 1956 Act. Mere originality in points of design aimed at appealing to the eye as commercial selling points will not in our judgment suffice.

It said that by 1995 the DC01 handle had become one with which any vacuum-cleaner designer would be familiar. I note that in Farmers Build at page 481 Mummery LJ expressed serious misgivings about a suggestion in a text book that the Eiffel Tower had become a commonplace design. I think that I can safely conclude that the learned Lord Justice would have had even more difficulty with the suggestion that Dyson had made its own design commonplace in the manner suggested by Qualtex.