Designs play a vital role in marketing and consumer choice. Considerable resources and expense go into creating design features that provide a competitive edge in the marketplace. Many products are neither inventive nor constitute copyright works, but are marketed with features that have an artistic, aesthetic value. It is these features, either of appearance or arrangement of a commercially exploited article, which are the subject of design protection. One can therefore say that legal protection for design falls between patents and copyright. Examples of products which fall into the design sphere include jewellery, textiles, white goods, sunglasses, cars, aircraft, etc.
Traditionally, design rights have been regarded as the least important intellectual property right after copyright, patents and trade marks. However, this perception is changing. First, commercial designs are gaining considerable economic importance in the marketplace. Secondly, as a result of the implementation of new design laws, the level of legal protection afforded to designs has increased. Finally, the owners of registered design and design rights appear to be more active in enforcing their rights through the courts.
UK design law legislation is now over 200 years old. Currently, designs are protected via a combination of a system of:
- registered designs under the Registered Designs Act 1949 (as amended); and
- the unregistered ‘design right’, a residual role for copyright.
Both forms of protection are governed by the Copyright, Designs and Patents Act 1988. Community design law will not be covered separately as the principles are similar. A knowledge of design law will provide an appreciation of the choices available to a designer who wishes to acquire protection for the appearance of an article under UK law.
Prosthetics UK Ltd have designed a breast prosthesis to assist breast cancer sufferers following surgery. In creating the design, the shape of the breast prosthesis was influenced but not dictated by the shape of a bra and would have fitted a number of different bras. The company seeks your advice on legal protection for the design.
Advise Prosthetics UK Ltd as to the registrability of the design or any other protection that may be available for the breast prosthesis design.
This problem concerns the application of design law principles and is based on the unreported case of Amoena (UK) Ltd v Trulife Ltd (1996). Students should:
- note the two forms of design protection, registered and unregistered design;
- focus on evaluating the negative criteria for design protection;
- analyse whether the breast prosthesis design is excluded from registration under the RDA 1949;
- analyse the availability of protection under s 213 CDPA 1988 or whether the design is excluded under either the ‘must fit’ and ‘must match’ principles;
- reach a reasoned conclusion in order to appropriately advise Prosthetics UK Ltd as to how they should proceed to protect their design.
The nature of design law is that it exists to protect the appearance of articles such as the breast prosthesis rather than the article itself. There are two forms of design protection that must be considered in relation to protecting the breast prosthesis design from unauthorised copyright, registered and unregistered design. The principal means available under United Kingdom law to protect the appearance of a product is registration under the Registered Designs Act 1949 (RDA 1949) or the unregistered design right under the Copyright Designs and Patents Act 1988 (CDPA 1988). Determining the best form of protection for the breast prosthesis will depend on the nature of the product and whether the legal requirements under the respective legislation are met.
Protection as a Registered Design
The registered designs system under the RDA 1949 has much in common with the patents. Section 1B of the RDA 1949 has two positive criteria which a design must satisfy in order to be registrable, namely novelty and individual character. These requirements are separate and should be applied sequentially, like the novelty and inventive steps under the Patents Act 1977. This will involve comparing the breast prosthesis design with the prior art, which, like the prior art in patents is potentially worldwide. As there are no facts to the evidence otherwise, we will assume that the breast prosthesis meets these positive requirements.
However, more importantly in the context of the breast prosthesis, the RDA 1949 excludes two types of design features from protection. Section 1C(1) and (2) comprise features ‘solely dictated by the product’s technical function’ and ‘must fit’ features. ‘Must fit’ is a somewhat imprecise summary and the exact wording of s 1C(2) should be cited: ‘features of appearance of a product which must necessarily be reproduced in their exact form and dimensions so as to permit the product in which the design is incorporated … to be mechanically connected to, or placed in, around or against another so that either product may perform its function.’ As yet, there is no case law on s 1C, but the interpretation given to the exclusion in s 1C(1) together with that of the parallel provision in s 213(3)(b)(i) CDPA 1988 suggest that it will have a narrow scope. This will probably make it difficult for the breast prosthesis to gain registration given that we are advised that in creating the design, the shape of the breast prosthesis was influenced but not dictated by the shape of a bra and would have fitted a number of different bras.
Protection by Design Right
It may be a better option to consider protecting the breast prosthesis under the design right created by the CDPA 1988. Part III of the CDPA 1988 introduced an important new form of intellectual property – unregistered design right – to replace copyright as the basic vehicle for the protection of functional designs (although it also protects designs that have eye-appeal). This new right has much in common with copyright but offers much less protection.
Design right subsists in original designs, just as copyright does in original works. There is no need for there to be a design drawing or other document, as with copyright (though the design does have to be fixed in some form: Mayfair Brassware Ltd v Aqualine International Ltd (1997)). Design right only subsists in original designs. The basic test of originality is that the design must be independent in the sense that it is not a copy although it need not necessarily be novel. In C & H Engineering v F Klucznik & Sons Ltd (1992) (the Pig Fenders case) Aldous J held that the same test as imposed in copyright law would be appropriate: that the design was not copied but the independent work of the designer. Section 213 provides that original designs attract unregistered design right protection: but a design is not original if it is commonplace in the design field in question. We will assume that Prosthetics UK Ltd has a fixed version of its original breast prosthesis design as there are no facts to the contrary. Section 213(2) defines ‘design’ to mean the design of any aspect of the shape or configuration of the whole or part of an article. This means the overall appearance or form of an article, or any part of it. (Registered designs, by contrast, are largely concerned with particular features of a design). In Ocular Sciences Ltd v Aspect Vision Care Ltd (1997) Laddie J observed: ‘The proprietor can choose to assert design right in the whole or any part of his product. If the right is said to reside in the design of a teapot, this can mean that it resides in the design of the whole pot, or in a part such as the spout, the handle or the lid.’ Design right may therefore protect component parts that together make up an article, either individually as articles in their own right or collectively. See Baby Dan AS v Brevi SRL and Trend Europa (1998). This may be advantageous to Prosthetics UK Ltd as component parts of the breast prosthesis may be eligible for protection even if the whole article is not.
A Method or Principle of Construction
Design right does not subsist in certain situations (s 213(2)). A key issue is whether the breast prosthesis design is excluded from design right protection on the basis of either it being based on a method or principle of construction (s 213(3)(a) CDPA 1998) or a ‘must fit and ‘must match’ (s 213(3)(b)). The underlying policy for the two exclusions set out in s 213(3)(b) is derived from the decision in the House of Lords in British Leyland v Armstrong. It has the objective of leaving the manufacturers of spare parts free to compete by making articles which are compatible with the design.
Design right does not subsist in those parts of the design of an article which enable an article to fit or connect to another so that either article may perform its intended function. The ‘must fit’ exclusion is primarily concerned with the ‘interface’ between two articles or ‘things’: Ultraframe UK Ltd v Clayton and Dyson Ltd v Qualtex. Some cases have observed that parts of the human body are an ‘article’ for this purpose, so that in Ocular Sciences Ltd v Aspect Vision Care Ltd the need for a contact lens to fit the eyeball was held to fall within the ‘must fit’ exclusion. In particular, the radius on the rear face of a contact lens was therefore a must-fit feature. In Parker v Tidball, the shape of a mobile phone was dictated by the need to fit comfortably within the user’s hand. However, in Amoena (UK) Ltd v Trulife Ltd (1996), a case in point as it also involved a breast prosthesis design, the exclusion was held not to apply. In its reasoning, the court added that the s 213(3)(b) exclusion is concerned with ‘a much more precise correspondence between two articles’. In other words, to construe the provision as meaning that any article which is shaped to cover or contain another article cannot qualify as design right would be unhelpful. To clarify further, it is not the design for the spare part itself which is excluded from protection, but only the design of those features of shape or configuration of the article which enable it to fit. A competitor who wishes to produce an article will still be prevented from copying the free-standing parts of the design but will be able to copy the connecting or ‘must fit’ features. These may be applied to the second design to produce a competing article which will fit and function. The ‘must fit’ and ‘must match’ exceptions are intended to prevent design right conferring a monopoly and thereby to preserve competition. They permit copying where design constraints compel it.
In conclusion, the decision in Amoena is particularly helpful for Prosthetics UK Ltd and its breast prosthesis design. Design right protection of the breast prosthesis design will begin when it is first recorded in a material form or when articles made to the design are first made available: s 216 CDPA 1988. Design right will generally expire 10 years after the end of the year in which articles to the design are first made available for sale. To avoid perpetual protection for unmarketed designs, s 216(1)(a) provides for an overall period of 15 years from the end of the calendar year in which the design is first recorded.
One common failing is not reading the question carefully. As the facts of the problem question do not suggest that the breast prosthesis design is unoriginal or commonplace, it is best to only briefly discuss the requirements of ‘originality’ and ‘commonplace’ under the CDPA 1988. Concentrate on resolving the issue of whether the breast prosthesis design is excluded from protection due to the ‘must fit’ and ‘must match’ exceptions.
The focus of the question is evaluating the negative criteria for protection and whether the design is excluded from registration. Ensure that the majority of your essay is devoted to this issue.