UK Unregistered Design Right – Is It Any Clearer?

The provisions of the Copyright Designs and Patents Act 1988 ("CDPA 1988") which deal with the UK unregistered design right are notoriously poorly drafted and unclear. Almost two decades after the provisions came into force, Jacob LJ said in Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166:

"It has the merit of being short. It has no other ... The amount of textbook writing and conjecture as to the meaning is a testament to its obscurity. We just have to do the best we can, trying to arrive at "an interpretation which the reasonable reader would give to the statute read against its background" ... The absence of any clear policy, as to where the line of compromise was intended to run, means that brightline rules cannot be deduced".

In 2014, an attempt was made (in the Intellectual Property Act 2014) to clarify the provisions. The following underlined words in s. 213(2) were deleted: "In this Part 'design' means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article". The underlined words had given rise to particular difficulties - there were competing views in the case law and practitioner text books as to what they meant, which had never been resolved. Unfortunately, the removal of the unclear wording has not provided the clarity which was needed. The scope of s. 213 remains unclear, and there are competing views as to whether i) the deletion of the words actually changed the law at all; and ii) what is meant by "part of an article".

HHJ Melissa Clarke, sitting in the IPEC, has recently provided her analysis in a case concerning baby baths - Shnuggle Limited v Munchkin, Inc. The judge declined to answer the first question, saying, "It seems to me that now that the words 'any aspect of' have been excised from section 213(2) there is no longer any practical utility to considering the question "What is the difference between a 'part' and an 'aspect' of an article?". The relevant question should now be only "Is this a design for 'part' of an article?". In our view, that approach is sensible - given that the amendment is now over 5 years old, the meaning of the deleted words is of academic interest only, and what matters is what the current wording means.

Focusing therefore on the key question as to what the remaining words in s. 213 mean, the judge reviewed the authorities (including HHJ Hacon in DKH Retail Ltd v H Young Operations Ltd [2014] EWHC 4034 (IPEC) and the late Henry...