Modern European intellectual property (‘IP') laws contain savings aimed at preventing the abuse of competition, especially in the spare parts market.
The potential for abuse was illustrated by the paradigm case of British Leyland Motor Corp (‘BL') v. Armstrong. BL sought to enforce a monopoly under the then UK copyright law in the design of an exhaust system for BL's Morris Marina cars.
Nevertheless, European countries have struggled to agree on common standards of protection for industrial designs. Thus, the EU Designs Directive (with which the UK's registered design law complies) included the following ‘cop out' for spare parts:
“… Member States shall maintain in force their existing legal provisions relating to the use of the design of a component part used for the purpose of the repair of a complex product so as to restore its original appearance and shall introduce changes to those provisions only if the purpose is to liberalise the market for such parts.”
In the wake of BL v. Armstrong, UK law has maintained a declining scale of protection for: (a) true artistic works (copyright); (b) functional items with eye appeal (registered designs); and (c) purely functional designs (UK unregistered design).
Divergent views on the correct dividing line between IP and fair competition for spare parts recently came to the fore in EU Intellectual Property Office (‘EUIPO') proceedings involving Miele's EU registered design for vacuum cleaner bags.
On the application of Chinese generic manufacturers, Miele's registration was invalidated by the EUIPO. This was on the basis that the bag was part of a complex product (the vacuum cleaner) which was not visible in normal use and therefore excluded from protection.
However, on appeal it was held that the bag was not a component part of the vacuum cleaner: vacuum cleaner bags are not intended for the repair, maintenance or servicing of a vacuum cleaner. Vacuum cleaner bags are consumables independently advertised and offered on the market. This was despite: (1) an intervening appeal decision saying that vacuum cleaner bags were component parts; and (2) undue reliance on the Locarno classification of products for the registration of designs which is for administrative purposes only.
The upshot is that Miele can use its registered design to prevent anyone else making / selling the same or substantially the same vacuum cleaner bag and / or a vacuum cleaner bag that does not create a different overall impression on the ‘informed user'.
It has to be said that to a non-‘informed user', Miele's bag looks much like other squarish vacuum cleaner bags with plastic fittings in the middle to attach the bag to the cleaner.
This piece was written and researched by the Humphreys Law intellectual property team including, in particular, Tristan Morse. The IP Team at HLaw regularly act for claimants / defendants in design matters across multiple sectors. If you have any queries with respect to any of the matters raised above, then please do contact a member of our IP team.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
