REGISTRABLE DESIGNS (Hansard, 25 July 1988)

§ Mr. Rowlands
I beg to move amendment No. 326, in page 113, line 26, after 'eye', insert 'of persons acquiring or using the article'.

§ Madam Deputy Speaker
With this, it will be convenient to discuss the following: Amendment No. 325, in page 113, line 41, leave out subsection (3).

§ Mr. Rowlands
Important issues arise from my amendment. The Minister will recall that we covered this course and discussed this issue in Committee on 16 June when we discussed what was required to attract registered design right. The Minister stated that the Government wanted to ensure that purely functional designs do not qualify for the longer and stronger protection given by the Registered Designs Act 1949".—[Official Report, Standing Committee E, 16 June 1988; c. 621.] Then, he stated that we had to show that not only were the articles that would attract registered design aesthetically pleasing in themselves, but that they made an impact on the purchaser. We had a considerable discussion about the basis on which one could decide how to define whether a purchaser had bought an article on the grounds of the attraction of its design. That is what new section 1(3) attempts to do.
208 The clause meets the problem of whether a purely functional design could attract a registered design right. That is barred in subsection (l)(b)(i) of the new section 1 in clause 255. Therefore, there is no problem on that front, as we have already covered ourselves on that. However, it is possible that a problem will arise in connection with subsection (3) of clause 255.
I understand from the advice that I have received that under the law as it stands, the court must have regard to the eye of the customer when deciding whether an article attracts a registered design right. It was in the case of Amp v. Utilex in 1972 that that principle was established. Therefore, the idea that one must go beyond the aesthetic appeal and prove and demonstrate that the design would attract the purchaser in such a way as to qualify for a registered design right, is already enshrined in case law, and in existing law. It is under subsection (3) as it was drafted that we believe that problems might arise.
I have referred to cases where the number of articles that may attract design right may be ruled out under subsection (3) on the ground that it would be difficult to prove that anyone had had his design to purchase certain articles affected by the design itself. I have argued that that would lead to greater confusion and that, even worse than confusion, it might rule out whole series of articles which could attract a registered design right under existing law but might not do so as a result of subsection (3).
In column 623 the Minister said that he could not see any difficulty as to why a telephone or even a computer—I am sure that the hon. Member for Torridge and Devon, West (Miss Nicholson) will be interested in this—would not attract a registered design right and that he believed that this subsection would not rule that out.
I cast doubt then in Committee and do so again now on whether that would be the case. How would one prove whether the purchaser of hi-fi equipment, a computer or a telephone had been materially affected in making the decision to purchase by the design as opposed to the many functional and pricing issues? Does one buy a computer because of its design, its purely functional character or its price? Those issues are raised by clause 255(3), which says: A design shall not be registered in respect of an article if the appearance of the article is not material, that is, if aesthetic considerations are not taken into account to a material extent by persons acquiring or using the article, It is the phrase "material extent" that worried me, and I think that it worried others.
Many designs might not qualify for registered design right because it could not be proved that the purchase had been made as result of the material extent to which the aesthetic appeal of an article had attracted the purchaser. My two amendments seek to return to that argument, first by deleting subsection (3) and secondly by underpinning what we think is the existing law as a result of the 1972 Amp v. Utilex case. Amendment No. 326 says: after 'eye', insert 'of persons acquiring or using the article'. That makes it quite clear not just that one must take into account some theoretical aesthetic appeal but that the appeal must have some impact on the consumer.
The amendment reinforces the law as we think it stands, and as the Government intend. We are worried about the nature of clause 255(3). The Government have tabled amendment No. 103, which introduces the word "normally". I wait with bated breath to hear from the Minister whether the amendment meets the worry that I expressed in Committee. If he can say that, I shall be 209 happy to withdraw my amendment. We are on solid ground in worrying the Minister and the House about the potential impact of subsection (3) and the broad reference to the material extent to which purchases are affected by aesthetic design.

§ Mr. Butcher
We are aware that the hon. Member for Merthyr Tydfil and Rhymney (Mr. Rowlands) does not like new section 1(3) of the Registered Designs Act 1949. However, it will not produce any significant change to the law as it stands following the recent Lego case, which I know has been keeping him awake for at least 12 months.
As I explained in Committee, the new section 1(3) is intended to make it clear that the question to be answered is not simply whether something has eye appeal in an abstract sense, but whether the eye appeal has a real impact on purchasers. It is important that designs of essentially functional articles are not registered, and the registry needs a workable test if it is to exclude essentially functional designs.
We are, of course, proposing a small change ourselves so that the test would be whether customers normally—the word to which the hon. Gentleman drew attention—take aesthetic appearance into account when they acquired articles of the kind in question. This is essentially the test stated by the Judicial Committee of the Privy Council in its recent judgment in the Lego case. We want to make this explicit so that the designs registry has a workable test that it can apply. That would be the difficulty with the hon. Gentleman's proposal. It would mean that we would still have a law which does not explicitly make clear what is required. That would be a mistake.
I am satisfied that there will be no problem about the clarity of the provision. I hope that that statement will not be held against me in future. When someone applies to register a design for a particular article, what will have to be decided is whether the aesthetic appearance of that kind of article normally matters to the customer. In other words, do customers normally care about the appearance of the article?
The fact that they may care as much, or even more, about other things is neither here nor there. All we want to know is whether aesthetic appearance normally matters, and in most cases there will be no doubt. In a few cases, however, there will be a doubt, and the registry will ask for evidence. Given that the reward is a registration giving a 25-year monopoly, I do not think that it is too much to ask applicants to follow such procedures in doubtful cases. The test is there to prevent essentially functional articles, such as internal structural girders, from being registered. It is not there to make life difficult or to limit unreasonably what can be registered, and I am confident that it will not do so.

§ Mr. Rowlands
The Minister is being extremely helpful, I think. Is the word "normally" being introduced to qualify the words "to a material extent"? We were worried that the requirement was broad and sweeping, but if the Minister can confirm that the word "normally" is intended to limit and restrict the concept of "to a material extent", I shall be more than happy to withdraw the amendment.

§ Mr. Butcher
I am divining what I think is an affirmative answer to the hon. Gentleman's question.

§ Mr. Rowlands
In that case, I beg to ask leave to withdraw the amendment.