Dyson Ltd v Qualtex (UK) Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Jacob,Lord Justice Lloyd,Lord Justice Tuckey |
| Judgment Date | 08 March 2006 |
| Neutral Citation | [2006] EWCA Civ 166 |
| Docket Number | Case No: A3/2005/0406 |
| Court | Court of Appeal (Civil Division) |
| Date | 08 March 2006 |
[2006] EWCA Civ 166
Lord Justice Tuckey
Lord Justice Jacob and
Lord Justice Lloyd
Case No: A3/2005/0406
HC 03 C01654
Henry Carr QC and Douglas Campbell (instructed by Messrs Wragge & Co) for the Claimant/Respondent
Richard Arnold QC and Tom Moody-Stuart (instructed by Messrs Robinsons) for the Defendant/Appellant
This appeal is from a judgment of Mann J, [2005] RPC 19, [2004] EWHC 2981 (Ch). It is about spare parts for Dyson vacuum cleaners. The kind of spare parts in issue are known in the trade as "pattern parts". These are replicas of the original parts, made deliberately so, to look as close as possible to the original parts.
The original designers and manufacturers of consumer items, (often known as "OEMs � original equipment manufacturers") , not surprisingly sometimes desire to control the trade in spare parts for their machines. The independent manufacturers or dealers generally wish to imitate the original manufacturer's part as closely as they can � they will sell better than a part which works as well but looks different. The reasons why they will sell better are complicated. One factor though is self-evident: a consumer is likely to have more confidence in a part which looks exactly the same as the broken one. One can readily imagine the consumer going into a shop with his broken part and saying "can I have another of these?" If the part looks different there will be sales resistance.
The legislative history
The history of the battles between the OEMs and the independents is extensive. It really began when in the late 1960s and early 1970s it was realised by the lawyers that copyright in drawings, particularly engineering drawings, could prevent the reproduction of those drawings in three dimensional form. The OEMs saw a weapon which could be used against the independents, particularly for "pattern spares". Prior to then the trade in pattern spares had grown up over many years with no-one thinking that anyone could prevent their manufacture or sale. In those now distant days the thinking was that articles such as spares could be protected by patent, or registered design (subject to eye appeal) or not at all.
In some countries, most notably the United States, this is, I understand, still the position. As far as continental Europe is concerned, there may in some countries be protection for spares, either under some specific law or by way of a general notion of unfair competition. According to a note provided Mr Carr QC, for Dyson, French law for example regards unnecessarily servile imitation of a non-functional part as unfair competition. It is a pity that there is simply no general rule about what can and cannot be done about spares within Europe. But such is the position.
Turning back to this country, in the 1970s the OEMs began to assert copyright. The first reported case was British Northrop v Texteam Blackburn [1974] RPC 57 about parts for weaving machinery. Although occasionally they failed for technical reasons (see e.g. Hoover v Hulme [1982] FSR 565, where adequate notice to a dealer had not been given) they were largely successful until the decision of the House of Lords in British Leyland v Armstrong [1986] AC 577. There the independent manufacture of spare exhaust pipes for cars was held lawful. Broadly there were two grounds: an implied right of repair and non-derogation of grant. The decision is not without criticism � see particularly the analysis of Leyland by the Privy Council in Canon v Green Cartridge [1997] AC 728. The conclusion in that case was that the " Leyland" defence is limited to clear cases of anti-competitiveness, or those where the ordinary man would "unquestionably assume that he could do for himself (or commission someone else to do) ". No Leyland-type defence is raised explicitly in the present case, though hints of it emerged from time to time.
6. The independents also sought to defend themselves by invoking, in one way or another, competition law. Thus, in Volvo v Veng, case 238/87 [1988] ECR 6211, a defence of abuse of monopoly under Art. 86 (as it then was) of the Rome Treaty was raised and failed. But in a reference to the Monopolies and Mergers Commission, Ford were found guilty of pursuing an anti-competitive course of conduct contrary to the public interest, Monopolies and Mergers Commission Report on the Policy and Practice of the Ford Motor Company Limited of not granting licences to manufacture or sell in the UK certain replacement body parts for Ford vehicles, February 1985, Cmnd. 9437. The Commission recommended changes in the law, the details of which do not matter since they were not followed up as recommended.
It was against this background that the White Paper preceding the Copyright, Designs and Patents Act 1988 was drafted. The judge set out the position as follows:
"The White Paper considered the extent to which spare parts should be excepted from any prevention of copying and pointed out (at paragraph 3.20) that there was a considerable debate as to whether functional articles should be protected or not. There are significant economic factors in play in such an argument. The White Paper indicated that the government adopted neither an extreme protectionist nor an extreme non-protectionist stance. The White Paper recommended some protection, but a more limited protection both in terms of its scope and in terms of its duration than was afforded to artistic works via the copyright regime. At paragraph 3.21 the White Paper said:
"3.21 British industry relies to a great extent on its innovative abilities. It is clear that there are many innovative industrial products which are costly to design but which are not truly inventive and which therefore do not qualify for patent protection. Accordingly, the government has concluded that some protection should be available to give the manufacturer who has spent money on design the opportunity to benefit from his investment, thus providing an incentive to further investment. It has also concluded that this protection should extend to spare parts but it readily accepts that the full protection of copyright law would be excessive."
And the report went on:
"3.26 The remaining alternative considered, and the one that the government intends to follow, is to provide protection on copyright principles but without the more objectionable features of full copyright protection� Where the functional article is also a spare part it is arguable that the potential for monopolistic abuse should be avoided by giving no protection outside patent and registered design systems; the House of Lords decision in British Leyland �v- Armstrong Patents Company is consistent with this approach. On the other hand, the Monopolies and Mergers Commission, in its report on the Ford Motor Company's exercise of its copyright in car body panels, which are manifestly mass-market spare parts, recommended that the term of protection for such panels should be five years. The law must however deal with all classes of articles, whether they are spare parts, components of more general utility or self contained products� Since it is not practicable to distinguish narrowly between articles in generally applicable legislation, a compromise is necessary. The government considers however that the basic premise should be that all original designs deserve a period of protection to give the designer a market lead over the copier.
3.27 Against this background, the government proposes to introduce a new form of protection against copying for original designs, including designs of spare parts�"
The Judge then said:
"From this the following matters are apparent. First, the White Paper clearly has spare parts, and the issues surrounding them, in mind in this context. Second, it clearly rejected the notion that spare parts should be exempted from any protective regime. Thirdly, it rejected the notion that spare parts should be subject to some special regime. They were to be dealt with like all other functional articles, though as will be apparent one or two provisions have particular application to spare parts."
This is obviously right. And it may be noted that the provisions we have to construe and apply exclude certain designs from protection altogether, whether or not they are designs for spare parts.
The Judge's conclusion was that the new unregistered design right ("UDR") created by the Act should be construed on the following basis:
"I shall therefore approach those provisions on the footing that spare parts come within their compass, both in terms of the conferring of the right and in terms of the qualifications or limitations on the right, but without any particular leaning towards the suppliers of original parts, the suppliers of replica parts or consumers. The "must fit" and "must match" provisions are clearly intended to apply to spare parts, but there is nothing in the Act, or in the White Paper, which requires me to lean in any particular direction in construing them. I will also approach the question of construction on the footing that Parliament intended to give real, and not ephemeral, protection to designs � this is important in considering the must fit exception to design right."
From time to time each side suggested we should approach the provisions with some sort of clear purpose in mind. Thus Mr Carr QC for Dyson submitted that UDR was...
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