Dyson Ltd v Qualtex (UK) Ltd
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Mann,Mr Justice Mann |
| Judgment Date | 21 December 2004 |
| Neutral Citation | [2004] EWHC 2981 (Ch) |
| Docket Number | Case No: HC 03C 01654 |
| Court | Chancery Division |
| Date | 21 December 2004 |
[2004] EWHC 2981 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
The Honourable Mr Justice Mann
Case No: HC 03C 01654
MR. HENRY CARR QC and MR. DOUGLAS CAMPBELL (instructed by Messrs. Wragge & Co) appeared for the Claimant
MR. RICHARD ARNOLD QC and MR. TOM MOODY-STUART (instructed by Messrs. Willoughby & Partners) appeared for the Defendant
Hearing dates: 23 –25 June, 28 th-30 th June, 1 st-2 nd , 5–9 July, 19 July 2004
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
PART 1 – INTRODUCTORY AND GENERAL MATTERS
Introduction
This action is the trial of the claim of Dyson Limited for infringement of unregistered design right which it claims to exist in respect of a number of spare parts for its vacuum cleaners. The Defendant is Qualtex (UK) Limited ("Qualtex"). It is one of the UK's leading suppliers of what are known as "pattern" parts, that is to say duplicate spare parts for domestic appliances (I expand on this below). The case raises a very large number of issues in relation to very large number of aspects of a large number of parts. In particular it raises questions as to the scope of the "must fit" and "must match" provisions of the Copyright, Designs and Patents Act 1988, and the Defendant considers that it raises serious legal and economic (and perhaps public interest) questions as to the ability of manufacturers to control the spare parts aftermarket. In addition to various matters arising under that Act, there are also significant questions of waiver and acquiescence. The case involves a lot of technical and legal detail. The hearing of the case took 14 days, during the course of which I heard evidence from over 20 witnesses of fact (and three experts). It would have taken much longer but for the commendably economical and efficient approach of all counsel in this case.
"Pattern" Parts
Products such as vacuum cleaners from time to time require spare parts. Those parts include not only such things as filters and drive belts which can be expected to require replacement over the lifetime of the machine, but they also include other parts of the machine (whether customer-replaceable or requiring the intervention of an expert) which may require replacement because they break or otherwise fail. When replacement is required, there are two sources of supply for the replacement parts. The first is the original manufacturer of the equipment ("OEM" – Original Equipment Manufacturer). The second is independent manufacturers and suppliers who make and supply two different kinds of spares. The first kind of spare is purely functional and does not attempt to reproduce the appearance of the original. The second kind is a part which is in effect a duplicate of the original (save that it would not bear the mark of the OEM). This latter category is apparently known as "pattern" spares and an important part of the market because sometimes customers would prefer to buy something which looks exactly like the original, either because he or she wishes to preserve the appearance of the original machine, or because almost as a matter of instinct he or she thinks it is somehow safer to buy something that looks like the original 1. Pattern spares (where available) are on many if not most occasions cheaper than comparable OEM spares and
in some cases they may be more readily available if the OEM has supply difficulties. Non-replica spares may be even cheaper, whether or not they are readily available. There is a market for all these types of spare parts (including consumable items such as filters). This case concerns pattern spares made to resemble certain Dyson vacuum cleaner parts.Dyson Vacuum Cleaners
In the course of the 1990's various employees of a company known as Prototypes Limited were engaged in the design of various vacuum cleaners under the control of Mr James Dyson, the now well known inventor and designer. On 23 rd June 1997 that company changed its name to Dyson Research Limited, and on 28 th April 2003 it assigned to the Claimant all its right and title to any unregistered designs and the rights to sue for any infringement on those rights. It is unnecessary for the purposes of this judgment to distinguish between various companies in the Dyson Group, and since this judgment will inevitably contain a large amount of detail on other topics I shall not clutter it further with detailed references to the various Dyson companies which were from time to time conducting the activities of the group. Since there is no issue in this action which turns on which Dyson Company was doing what at any given point in time, it will be sufficient to treat them all as one, and I shall refer to them globally as "Dyson" save on any odd occasion where it is necessary or appropriate to identify a particular company.
The short history of the machines with which this action is concerned is as follows. What follows is a general description of the products in order to provide a context for a consideration of the parts in question in this action. In respect of at least some products the date when it was first made available in the market is important and disputed. I shall make findings about that in due course. In this section of this judgment all dates are approximate. I also include reference to a couple of preceding models in relation to which Mr Dyson had a hand in the design because the prior existence of these models gave rise to certain issues as to the originality of parts of the later disputed designs. Pictures of all the relevant Dyson machines appear in Annexe A to this judgment.
The Iona Fantom and the Cyclon cleaners.
These two cleaners were both upright vacuum cleaners with detachable handles attached to hoses. Both incorporated the "Cyclone System" (as opposed to the more normal bag system) which lies at the heart of the Dyson vacuum cleaners. They were both sold in the 1980's. Their significance for the purposes of this action is that certain aspects of the parts which are the subject of this action are alleged to have been copied from those designs so as to make the Dyson designs non-original, or are alleged to demonstrate the commonplace nature of some designs.
DC01 Upright Cleaner.
This was the first of the Dyson range to be launched in this country. It was launched in 1992/3 (this is a disputed date). It features a cleaning head which passes over the surface to be vacuumed, and a body which houses the motor and the cyclone mechanism where the dust is deposited. On the back is a handle with which the machine is manoeuvred around the room. The handle protrudes from the top of the machine, and below that is a long aluminium tube which passes into, and is connected to, a length of flexible hose, which itself connects to the bottom of the machine. The top of this handle ("the wand handle") is hollow. By pressing a release catch on the front of the handle, the wand handle and the top of the hose into which it passes swing away from the machine, leaving them connected only by the hose at the bottom (at the "lower hose cuff", which features heavily in this action). When that is done the suction is directed away from the cleaning head at floor level and up the hose, enabling the user to vacuum upholstery, stairs and other surfaces by means of an appropriate tool placed in the top (hollow) end of the wand handle. Thus the machine has two modes – the normal carpet cleaning mode, during which it is pushed and pulled across the carpet (or other surfaces), and the above carpet mode via the detachable wand handle. In later models the upper end of the hose can be detached from the wand handle and a tool can be attached to it via an adaptor.
DC02 Cylinder Machine
Although called a "cylinder" machine, its design overall is not particularly cylindrical. As I understand it, it is given the name "cylinder" to distinguish it from the upright type. This machine was launched in March 1995. Its only method of delivering suction to a carpet or other surface is via a hose coming out of the top of the machine. That hose is flexible. To it is attached a curved plastic section, known again as the "wand handle", and to the end of the wand handle can be attached either a cleaning tool (such as a brush) or a metal wand or extension tube to the end of which the cleaning tool is attached. Again, this is a cyclone, and not a bag, machine.
DC03 Upright Machine
This was launched in about January 199Although different in certain aspects of its design from the DC01, it shared with it the features of being used either in "normal" carpet sweeping mode or above the carpet by means of the same sort of detachable wand.
DC04 Upright Machine
This machine was launched in about February 1999 in order to replace the DC01. Again, it is an upright machine with a detachable wand handle.
DC05 Cylinder Machine
This machine was launched in about November 1998 in order to replace the DC02. It is similar in overall concept, but differently sized and shaped.
DC08 Cylinder Machine
This machine was launched in June 2002 to replace the DC05. It has no particular relevance to this action.
DC11 Cylinder Machine
This is the most recent cylinder machine, launched in 2003. Again, it has no relevance to this action.
The Parts in Issue in this Case
As with any mechanical apparatus, from time to time parts of the various Dyson machines require replacement because they wear out, or because they break, or perhaps because they are lost (in respect of some of the attachments). The Dyson machines have filters, and some of them...
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