COMMONS AMENDMENT (Hansard, 2 November 1988)

§ Lord Young of Graffham
My Lords, I beg to move that the House do agree with the Commons in their Amendment No. 206, and I should also like to speak to Amendments Nos. 243 and 249. These amendments concern the must-fit and must-match exceptions which have been one of the more hotly debated issues in the Bill. Indeed, your Lordships' House debated this issue at each of the preceding stages of the Bill and I think it is fair to say that all the arguments have been fully aired both here and in the other place. Therefore, I will simply say that Amendments Nos. 206 and 243 are merely drafting amendments which are needed to make the distinction between the two articles concerned quite clear but which do not affect the substance of the exceptions in any way.
Amendment No. 249 is however different and I should say a few words about it. The object of this amendment is to ensure that the must-match exception in registered designs operates in the way it has always been intended to operate in the light of what is often referred to as the Lego judgment. This is a recent judgment of the Judicial Committee of the Privy Council on the question of whether a particular design was registrable under the Registered Designs Act. An element in the reasoning in the judgment was that a design qualifies for registered designs protection if it includes any features which are not excluded by the definition of "design" in Section 1 of 329 the 1949 Act; and of course it is quite right that non-excluded features should be protected. However, according to the judgment, what is registered (and therefore what is protected) is the whole of the design, including any excluded features. What that would mean is 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. That is of course the wrong result.
The aim of the must-match exclusion is to allow copying of those features, and I might add only 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 by introducing a new subsection (6) into new Section 7 of the Registered Designs Act.
I should perhaps add for the record that Amendment No. 249 also introduces a new subsection (5) into new Section 7 of the Registered Designs Act. This new subsection is concerned with the entirely separate matter of the position of third parties who infringe the rights of the proprietor of a design before his design is actually registered. That does not involve any change in the law because there is an equivalent provision in the present Section 3 of the Registered Designs Act. However, as a consequence of various changes which must have been made, it is now more convenient to include the provision in Section 7.

The Earl of Halsbury
My Lords, a number of us have been approached by the Chartered Institute of Patent Agents to elucidate the status of Amendment No. 206. The Minister has told us it is a drafting amendment. I look at it more as a grammatical paraphrase. I look to a drafting amendment to clarify the interpretation. I cannot see that that grammatical paraphrase in any way elucidates anything. If the Minister can agree with me on that point I shall not pursue it further. The Chartered Institute of Patent Agents has asked a number of us to seek elucidation on that point. It seemed to me to be a distinction without a difference.
My second question—and this is a debatable Motion—I should like to preface with an illustration of the most frequently replaced part under the bonnet of a motor car; to wit, the electric battery. The electric battery has to sit in a cradle which is part of the car's fabric. Within that cradle it is secured by some kind of lug with a screwtap on top or possibly by a nut and bolt. As I read it, the industrial property in the design of the battery which enables it to fit into the cradle and be secured on the flange by lugs or something of that kind is not industrial property within the meaning of the Bill so far as design is concerned.
330 If we pass from the bottom of the battery to the top of the battery a rather different situation arises, because one has to have access to inside the battery to fill it with distilled water, and in order to stop the sulphuric acid and the water in the battery from slopping over they have to be sealed with various devices, possibly a push-fit type cap or screw-in type plug. That does not seem to be excluded from industrial design. It is not part of the fabric of the car as supplied by the motor manufacturer. I should like to have elucidation as to whether under the amendment the status of the top of the battery is any different from the status of the bottom of the battery.

§ Lord Williams of Elvel
My Lords, the noble Earl has raised one or two interesting points of a general nature about design right. The group of amendments to which the Secretary of State has spoken offers me what is perhaps the last chance to say, and to put on the record, that we do not believe that the unregistered design right is a necessary construction.
I said in Committee and at Report stage that I am not convinced that the complex arrangements which are embodied in the unregistered design right are necessary. I continue to foresee enormous difficulties in interpretation—just as in the territory of must-fit and must-match exceptions covered by this amendment—in deciding what designs and how much of any design is included or excluded.
To quote a current example, in a set of Lego bricks is a set excluded or is it only the holes and the press studs on the Lego bricks which are excluded? It is very difficult to say where it starts and where it ends. In my view a much more satisfactory overall strategy would have been to keep the industrial application of the copyright law under the Copyright Design Act 1968 and allow it to remain cumulative with registered design protection but limited for its duration for functional as well as non-functional designs.
We recognise that we have lost that battle and that the Government are determined to press ahead with the design right. However, we believe that it will cause all kinds of problems of the type which the noble Earl raised. We are seriously worried that it will provide, as the noble Lord the Secretary of State said about an earlier government amendment, a fertile quarry for legal minds to pursue.

§ Lord Young of Graffham
My Lords, perhaps I may say at the outset to the noble Lord, Lord Williams of Elvel, that his Lego example is the very stuff on which legal practices will be founded in the future. I have no doubt that there are many matters of fact which will only be determined in that way.
I can offer a practical word of advice to the noble Earl, Lord Halsbury; that is, that in future he should use sealed batteries, in which case the problem will not arise. However, I suspect that I shall not be allowed to get away with that kind of answer. The noble Earl is correct in his statement that the parts of a battery which have to fit the supporting parts of the car are not protected under design right. The upper part of the battery will not in general have to be 331 copied in order to supply a replacement battery and should therefore qualify for design protection.