§ Mr. ButcherI beg to move Government amendment No. 105, in page 116, line 11, at end insert—
'(6) The right in a registered design is not infringed by the reproduction of a feature of the design which, by virtue of section 1(1)(b), is left out of account in determining whether the design is registrable.'.
§ Mr. DoranI am not sure whether at this time in the morning I can articulate my argument. The amendment appears to introduce a "must match" type provision into registered design right. Read together with new section 1(1)(b) of the 1949 Act, it seems to open up a whole new area of potential conflict and dispute. Can the Minister explain how he expects the proposal to operate in practice?
§ Mr. ButcherThe amendment is needed to overcome an unwanted effect of a part of the reasoning in the Lego judgment. Part of the reasoning in that judgment was that a design qualifies for registered designs protection if it includes any features that are not excluded by the definition of "design" in section 1 of the 1949 Act, and of course it is quite right that non-excluded features should be protected. However, according to Lego, what is registered, and therefore what is protected, is the whole of the design, including any excluded features. That would mean that "must match" and any other excluded features would in fact be protected, provided only that the design of which they form a part contains at least one non-excluded feature. This is, of course, the wrong result.
The aim of the "must match" exclusion is to allow copying of those features of a design for which there is no design freedom while protecting those features where there is design freedom. It is therefore necessary to make a specific provision to ensure that "must match" and other excluded kinds of design features do not get protection by the back door. The amendment makes the necessary provision.
§ Amendment agreed to.