"Design protection protects the appearance of items, especially commercial products that might not otherwise be protected by patent or copyright law. Design protection may apply to relatively simple products, to components of more complex ones, or to the overall appearance of such “complex products”. In domestic law there are two main forms of design protection: registered design and unregistered design right (UDR). In the wider European context, registered designs may also be registered with the Community Design Register, whilst there is a short-duration unregistered Community design right (UCD). This discussion will concentrate on registered design (for which the domestic and Community provisions are now virtually identical) and UDR.
The Registered Designs Act 1949 (as amended) provides that registration of a product protects its “appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation”31 where a “product” is any industrial or handicraft item.32 The requirements for the registration of designs (such as novelty and individual character) will not be examined in detail;33 however, some of the constraints on what may be registered are relevant to issues arising from 3D printing of spares or parts for repair of a product.
- Component Parts. A component part of a complex product may only be protected as a registered design if it is both visible to the user in ordinary use (which excludes maintenance or repair) and is of novel and individual design.34 Many spare parts for cars or domestic appliances will be hidden in everyday use whilst many others, even if normally visible, may be of commonplace design, such as a pipe or washer.35
- Designs Dictated by Technical Function. Features of a product dictated solely by technical functionality may not be protected by registered design.36 This constraint was considered by the ECJ in Philips v Remington37 where Colomer AG opined that protection would not be available where the design was the only way of achieving the required function. Cornish contrasts this with the decision of the House of Lords in Amp v Utilux38 under the previous UK legislation where it was held that whilst an electrical terminal could have been designed in various equally effective ways, all would have been dictated by technical function and so been unregistrable.39 (It would now be unregistrable as an invisible component part.)
- “Must Fit” Exception. A design or design element is not registrable if it comprises “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 or to which it is applied to be mechanically connected to, or placed in, around or against, another product so that either product may perform its function”.40 There has been little if any judicial consideration of this point, but by analogy with similar provisions for unregistered design right this provision will exclude many spares and accessories from protection if their shape is determined by the need to connect to or fit into or around another product.
The effect of these exemptions is that many items attractive for 3D printing will not be protected as registered designs. Many spare parts are likely to be components or fall under the “technical function” or “must fit” exemptions. The latter also applies to the shape of accessories and customisation items such as covers for mobile phones (but not, as noted below, to copyright artwork decorating them). Furthermore, even if a spare part escapes these exemptions and is protected as a registered design, such protection is not infringed by its use for “the repair of a complex product so as to restore its original appearance”.41 This would cover the 3D printing of a part such as a car wing panel that was normally visible and not wholly constrained in design by its function or fit, but which had to be replicated in order to maintain the vehicle’s original appearance.
Even where a registered design is copied via a 3D printer this would not be an infringement if it were done “privately and for purposes which are not commercial”.42 Both criteria must be met; it is insufficient that copying is not done for profit. Purely personal use of a 3D printer to make items will thus not infringe a registered design, so long as the purpose for which the item was made was genuinely non-commercial. In the introductory scenario therefore, even if Acme’s product is protected as a registered design, neither Bridget nor Charlie infringe that design by making a copy for personal use (although this may not be so if, say, Bridget makes an item for use in paid work from home). However, use in other settings, such as a repair shop, will have to avoid registered designs if it is not to infringe them, unless the “complex product repair” exemption applies. For non-private educational purposes, there is a “fair dealing” exemption,43 but this only applies where the use does not prejudice normal exploitation of the design,44 e.g. by substituting for purchase of the item itself. So if Charlie works in a school and uses Acme test-tube stands, if these are registered designs he could not legitimately 3D-print copies to avoid buying new ones from Acme.
Unregistered Design Right
UK UDR was introduced by the Copyright, Designs and Patents Act 1988 to help resolve anomalies in industrial design protection regarding the supply of third-party spare parts (especially for cars) that had culminated in the House of Lords decision in Leyland v Armstrong.45 UDR provides protection akin to registered design, but rather than requiring registration it arises automatically, as with copyright. Like copyright it is therefore only effective against actual copying.46 As an unregistered right its subsistence will be a question of law in each case.
UDR subsists in the shape and configuration of an item, but not its surface decoration or method or principle of construction.47 It also excludes features that are required for it to be “connected to, or placed in, around or against, another article so that either article may perform its function” or which “are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part.”48 The “must fit” exception is similar to that for registered design, whilst the “must match” exception is analogous to the “repair of complex products” provision.
- Originality. To qualify for UDR, a design must be original, defined as not being “commonplace in the design field in question at the time of its creation”.49 In Farmers Build v Carrier50 Mummery LJ noted:
The designs are “original” in the sense that they are the independent work of the designer of the TARGET machines: they have not been simply copied by him from the GASCOIGNE or SUDSTALL machine….Time, labour and skill, sufficient to attract copyright protection, were expended by Mr Hagan in originating the designs of the individual parts. Similarly, he originated the assembly or combination of those parts in the TARGET machine as a whole.
Laddie J’s remarks illustrate that UDR may subsist in individual parts of a design, the design as a whole, or both. Consequently, an allegedly infringing design may be analysed by being broken down into component parts, some of which may be held to infringe UDR whilst others do not. The meaning of “design field in question” was considered in Lambretta v Teddy Smith51 where Jacob LJ held it to be the range of designs with which the designer of the item in question would be familiar.
- Method or Principle of Construction. In Rolawn v Turfmech52 Mann J summarised prior case law as indicating that this provision prevented UDR subsisting in what he described as abstract, generalised design concepts. Under Mann J’s interpretation aspects of design dictated solely by manufacturing technique or necessitated by sound engineering design will be likely to fall within it. As noted by the Court of Appeal in Landa & Hawa International v Azure53 this provision seeks to prevent a designer gaining a monopoly over a particular way of making a type of product.
- “Must Fit” Exception. The “must fit” exception for UDR has been the subject of considerable judicial consideration. In Parker v Tidball,54 the disputed designs were for mobile phone cases, which had both to fit around the phones they were designed for and to allow access to keyboards and displays. Robert Englehart QC adopted the approach of breaking each design down into its components in order to assess whether each element’s design was commonplace and, if not, if it was constrained by the need to fit the phone or if alternatives would have been possible. In Dyson v Qualtex55 the exception was held to apply to those elements of spare parts that were shaped so as to allow them to conform with the product they were to be fitted to. The “must fit” exception has even been extended to designs that conform to parts of the human body, such as contact lenses in Ocular Sciences56 – although in Amoena v Trulife57 it was held that breast implants were not caught by this exemption, as they were too flexible to be considered “constrained” in their design.
- “Must Match” Exception. The “must match” exception is analogous to the “complex repair” provision for registered design. The example of a car wing panel illustrates it well, and has been cited as epitomising this provision, e.g. by Jacob LJ in Dyson v Qualtex. Dyson concerned “pattern parts”, spares which replicated the appearance as well as function of the original manufacturer’s parts, in that case for vacuum cleaners. Jacob LJ distinguished between spares for cars, where matching overall appearance was paramount, and those for more mundane items – such as vacuum cleaners – where it was less so. Without clear Parliamentary intent to exclude spares from UDR altogether, he held that the “must match” exception applied only in the former instance."
- Article: S Bradshaw, A Bowyer and P Haufe, "The Intellectual Property Implications of Low-Cost 3D Printing", (2010) 7:1 SCRIPTed 5'