Copying designs of spare and component parts

Author: Tony Pluckrose, Partner, Boult Wade Tennant.

In 1988, Parliament revised design law in order to encourage competition in the market for spare and component parts. Copyright Designs and Patents Act 1988 substantially altered the protection in relation to the copying of designs.

The Ford Motor Co. Ltd. and Iveco Fiat SpA recently tested this law by filing a series of applications to register the designs of a range of vehicle components. The applications were all rejected by the Designs Registry, and both Ford and Iveco appealed. Ford took its appeal all the way to the House of Lords, which in December, delivered a judgment which is, in many ways, surprising (CSR Vol 18, page 131).

The House of Lords agreed with the Registered Designs Appeals Tribunal in making its decision on the contested applications, on the basis of the definition of 'article' in Registered Designs Act. The Act defines that parts of articles can be considered for registration 'if made and sold separately'. The Lords concluded that this definition cannot be read literally, but instead should have the effect of defining a spare part as registrable only if it has 'an independent life' as an article of commerce and is not merely an adjunct of some larger article of which it forms part'.

Of the designs considered, the following were considered articles of commerce with an independent life and were registered: wing mirror; wheel; seat; steering wheel; vehicle lamp (designed for use on a number of vehicles); and wheel cover. The following designs were not considered to be articles of commerce with an independent life and were therefore unregistrable: truck cab body panel; truck door; bumper; truck windscreen; dashboard panel; bonnet; cowl; front grille; grilles in the bonnet; rear spoiler; car body side panel; and rear car door.

Intended Use
An effect of the Ford case seems to be that whether a design is registrable depends on the intended use of an article at the time of design. Therefore, where possible, a manufacturer would seem better placed by instructing its designers to design components not only suitable for its own products, but also suitable for general use.

The decision also seems to be based on a section of the Act which has been part of the law since 1949. The intention of the definition of 'article' was always thought to be an intention to permit registration of parts of an article rather than to exclude registration of certain parts. Parliament obviously believed this, as the amendment to the law of designs brought about by the 1988 Act was clearly intended to restrict the protection that had previously been available for spare parts.

'Must-Match' Exception
In fact, the 1988 Act introduced a 'must-match' exception to limit the protection available to spare parts, such as vehicle body panels. In general terms, the 'must-match' exception excludes from registration features of shape and configuration of an article if that article has been designed as an integral part of a larger item and the features are dependent on the appearance of the larger item. It was the 'must-match' section and not the definition of 'article' which was used in the first instance by the Designs Registry to refuse registration of most of the original Ford and Iveco applications.

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