Exceptions to Design Right
Design right does not subsist in certain situations (section 213(2)). Some of these designs are also excluded from the definition of ‘design’ in the 1949 Act, as amended, so they cannot be registered. Here, the legislation clearly looks at individual features of the design.
The definition of design excludes the underlying principles or ideas behind the design. If they are to be protected at all, they are properly matters for the patent system.
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.
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. In Ocular Sciences Ltd v Aspect Vision Care Ltd  RPC 289 Laddie J considered that the ‘article’ which the article in the design had to fit could be the human eye. The radius on the rear face of a contact lens was therefore a must fit feature. In Mark Wilkinson Furniture Ltd v Woodcraft Designs (Radcliffe) Ltd  FSR 63, a fitted kitchen was not an article but a collection of matching articles, so the design for the kitchen unit was not deprived of protection. The meaning of the word “enable” was explored by Park J in A Fulton Co Ltd v Grant Barnett & Co  R.P.C. 16,  All ER (D) 1270. This exception is particularly intended to withdraw protection from spare parts which must fit in to existing equipment, though it also extends to complete articles (ee Philip Parker v Stephen Tidball  FSR 680, Ch D.) including some species of design that will be little more than one big must-fit feature (like a mobile phone case): it is particularly directed at those which offer interfaces enabling them to be fitted together: Electronic Techniques (Anglia) Ltd v Critcheley Components Ltd  FSR401, Ch D. In Fulton, however, a case for a folding umbrella was not a must-fit design:
It would in my view be unacceptable to construe the provision as meaning that any article which is shaped so about cover or contain another article cannot qualify for design right.
In the Parker case (which on the face of it seems hard to reconcile with this view) there was infringement of features in the design of which there was design freedom, so the ‘must-fit’ argument was not conclusive.
Notice that 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.
In the Baby Dan case, the deputy judge, David Young QC, gave a purposive construction to the must-fit exception. The claimant could rely on design right relating to various parts of a larger article, so the must fit exception would not exclude from protection the shape or configuration of the parts necessary to enable them to be assembled. A similar approach, recognising design right in component parts and restricting the must fit exception, informs the decision of Park J in Frayling Furniture v Premier Upholstery Ltd. (1999) 22(5) I.P.D. 22051.
In Novum (Overseas) Ltd v Iceland Foods plc and Austria Haustechnik  EWHC 53 the High Court considered the effect of the so-called must fit exception to design right. The defendants had made and imported freezer cabinets that reproduced the claimant’s design (drawings of which the first defendant had obtained under the pretence that they were needed for shop layout design purposes: infringement of copyright by reproducing the drawings was admitted).
The first defendant argued that it was co-owner of the design, having had some input into the design work. The judge held that it had not done sufficient to produce this result, and even if it had dealings in a jointly owned design needed the consent of all owners.
Though freezer cabinets are not the most exciting pieces of design work around, the judge considered that a combination of commonplace features could attract unregistered design right protection. The model in suit was quite different in overall appearance to prior designs that had been put in evidence. The defendants’ freezer was a substantial reproduction of the design, and notwithstanding the evidence the judge held that it had been copied and therefore infringed design right. However, dividers and gaskets which formed part of the cabinet were commonplace and also were covered by the must fit exception.
The second defendant escaped an award of additional damages as it had been unaware of unregistered design right and had trued to produce a design that was not a copy.
The ‘must match’ exception excludes from protection features which are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part.
It is intended to apply where there is a need for articles which are part of a single object to match the appearance of the rest of that object as a whole - it does not apply to pieces from a set of cutlery.
The exception is intended to cover the situation where a part is needed to restore the aesthetic appearance of an article. In such a case certain features of the design may be covered by the ‘must fit ‘ exception. The other features of the design are not free-standing since the designer must reproduce the shape of the item being replaced if their article is going to serve as a viable replacement. So, wherever, aesthetically, there is no design freedom, design right will not arise.
The need for the features of the design to match another must be considered, at the moment the design is created. So if the shape or design of an article is not dependent on anything else at the time the design is made, design right will subsist. It will be immaterial that at some future stage the use to which the article is put creates a must match situation.
Surface decoration is excluded from the scope of design right, again because the right is concerned with the overall form of an article. It may be registered (registration being concerned with features of an article) and may also be protected by copyright. See Designers Guild Ltd v Russell Williams (Textiles) Ltd. Surface decoration means more than a design printed or painted, or perhaps etched, onto an article – it includes a ‘v groove’ in a kitchen unit (Mark Wilkinson Furniture Ltd v Woodcraft Designs (Radcliffe) Ltd  FSR 63, Ch D.). In Lambretta v Teddy Smith argument that the design was not surface decoration but the configuration of different-coloured pieces of the garment was rejected.
Surface decoration is specifically excluded from the definition of a design for the purposes of copyright, so section 51 of the Copyright, Designs and Patents Act 1988 does not restrict copyright protection. The design right exception is not restricted to situations where dual protection actually exists.
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 (the Pig Fenders case)  FSR 427 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. A design may be original in that is it is not copied, but may not be novel for the purposes of the Registered Designs Act because it has been previously published.
Section 213 provides that original designs attract UDR protection: but a design is not original if it is commonplace in the design field in question. However, a design may, it seems, be original but also commonplace and therefore denied protection: see Scholes Windows Ltd v Magnet Ltd  EWCA Civ 532,  FSR 10.
In Interlego v Tyco Industries  1 AC 217,  3 All ER 949,  RPC 343 the Privy Council held that a design was not original where the only original input of the designer was to make modifications to the design drawings which were indistinguishable in the article made to the design. Amongst other changes, the radii on the corners of the bricks were altered. This did not start a new term of protection running. In Ocular Sciences Ltd v Aspect Vision Care Ltd  RPC 289 Laddie J held that although designs (in suit, for contact lenses) which looked the same to the naked eye could enjoy design right protection, merely changing the scale of an existing design would not create a fresh right. The commonplace exclusion applies to designs that are ‘trite, trivial, common-or-garden, hackneyed or of the type that would excite no particular attention in those in the relevant art.’ However, he did not think it right to try to advance a definition of the term.
In Spraymiser the High Court was asked to consider whether the claimant’s design was original for the purposes of unregistered design right. The defendant had purchased in the United States a wooden mannequin which could be reconfigured to form different items of furniture. The defendant described it to the claimant in the UK, suggesting that the claimant might develop something similar which the defendant would advertise in its mail order catalogue. Now there was some dispute about whether the defendant had shown the device to the claimant.
The claimant subsequently developed a similar design which was marketed by the defendant for several years until 1997 when the defendant stopped ordering the product from the claimant and found another supplier, using the claimant’s product as a template. The claimant sued for infringement of unregistered design rights and for breach of contract.
On the evidence, the Court decided that the claimant had never had access to the American model. Similarities between the two devices were inevitable because they were both representations of the human form, but this did not preclude the possibility that the claimant’s work was original.
Sub-section (4) adds a further limitation, requiring that a design is not commonplace, thus excluding designs which, while they are not copies, are no more than an expression of what is widely known in the design field in question. In the Pig Fenders case the judge described the ‘commonplace’ provision as imposing a requirement akin to novelty. He found that certain features of the pig fenders in suit were commonplace, so that although they were common to the plaintiff’s and the defendant’s designs, there was no infringement. But in Amoena v Trulife  IPD 19006 the court considered novelty unnecessary. Consideration of the prior art may nevertheless be relevant, as in Lone Star Toys Ltd v JM Enterprises of Wetherby Ltd.  FSR 857.
In Farmer Build Ltd v Carier Bulk Materials Ltd and others  ECDR 42,  RPC461 (CA)The Times, 23 December 1998 (Ch D) the plaintiff manufactured and marketed slurry separators. One of its products was problematical, and it agreed with the defendant that a new machine would be designed on the basis of two of the plaintiff’s old designs and improving on them. The relationship broke down: the defendant subsequently started to produce its own slurry separators which were externally different from those it had designed for the plaintiff but internally virtually identical.
The defendant claimed that the individual parts of the machines, and the machines themselves, were commonplace in the design field at the time of their creation. The court considered that the correct approach was to compare the design of the article in which UDR is claimed with the design of other articles in the same field, including the alleged infringing one. The material time for this exercise is when the design is created. A design copied from the design of an earlier article will not be original, and it is not necessary to consider whether it is commonplace or not.
Whether it is commonplace is determined by ascertaining the degree of similarity to the design of similar, independent articles in the same design field. In Scholes Windows v Magnet Ltd the field was windows, not uPVC windows, so the earlier use of a similar design on Victorian windows counted against the modern design being protected. This is to be done objectively, in the light of the evidence (including expert evidence) but is a question of fact and degree for the court. If there are aspects of the plaintiff’s design not found in other designs in the field, except the defendant’s, the court can conclude that the design was not commonplace. In Scholes the horn design had been used on windows for many years and was therefore commonplace. In the case of a decorative design where there is greater design freedom, as was the case there, the Farmers Build guidelines will be less help.
The guidelines were applied by the High Court (Rattee J) in Round Imports v PML Redfearn Ltd  CIPA 725, upheld sub nom Round Imports v Rexam Glass Barnsley Ltd by the Court of Appeal, 5 October 2000. This concerned UDR in a tall-necked bottle designed for the plaintiff for its Red Eye beverage. The design of the Red Eye bottle was original in that it was not a copy of another design: it was however very similar to a Miller bottle which the plaintiffs had provided to the defendant as a model, and although there were minor variations in shape and dimension they were not in the judge’s view sufficient to make the bottle significantly different from the Miller bottle or any other tall-necked bottle available at the time. Glass designers have always considered small differences sufficient, but it seems that the law differs from their view and their designs will now be open to copying. However, that case was decided on other grounds.
The guidelines were also applied in the Jo-Y-Jo case, where expert evidence showed that the cardigan designs in question were ‘classic’. Embellishing the garments with embroidery and edging did not prevent the designs being commonplace. In Fulton, a claim to unregistered design right in the handle and case of a folding umbrella was upheld: to enable functional designs to enjoy any protection, the judge (Park J) said, a narrow interpretation of what is commonplace was needed. Merely because references to two designs of close similarity could be shown was insufficient. Very minor changes of line or angle can have a significant effect on a design (as happened in Scholes).
In Spraymiser Ltd. v Wrightway Marketing Ltd.  ECDR 349 (High Court) the deputy judge took the view that the field was extremely small, consisting as it did of only two designs, namely the American one and the claimant’s. There were sufficient differences between them that the claimant’s design was not commonplace within the field. Had there been a greater number of candidates, more differences may (it is submitted) have been needed.