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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Designs of Parts, and Parts of Designs

The former British design law permitted registration of the design of part of an article, but only where the part was "made and sold separately".  Although the law has changed as regards applications filed since 2001, it remains in force for those designs applied for before that date.  Many other countries have the same provision.  A recent case illustrates how the provision operates in practice.

The Hong Kong case Bang & Olufsen A/S v. To Hok Chung (t/a Mirage Electronics Industrial Co.), CACV 207/2006, concerned the Beocenter 2 audio control centre.  This plays a DVD or CD, but requires a separate socket panel, to which it is connected by a wire, which supplies the power and speaker connections.  The defendant in an infringement action alleged that the design was the design of part of an article which was not made and sold separately, because it could not work without the socket panel and cable.The Court of Appeal held that the appropriate test was that laid down by Ford Motor Company Limited's Design Applications [1995] RPC 167.  The appropriate test there was not how products were being made and sold on the market at the date of infringement, but the situation at registration, before the articles to the design were made at all.  The House of Lords gave up the attempt to literally interpret the "made and sold separately" language and, instead, indicated that "the answer will … be supplied in many cases” by applying the criterion given by the Court of Appeal below, namely, "that to qualify … a spare part has to have an independent life as an article of commerce and not be merely an adjunct of some larger article of which it forms part".  In this case, there is no doubt that the control centre did not form part of a larger "article" merely by being connected to the "socket panel". 

The Hong Kong Court of Appeal added that the question was to be determined by reference to the contents of the application for registration (e.g. the product indicated).  There was no indication in the application that the design was the design of a part of an article; it was the design of an article, namely the control unit.  It differed in that respect from Samsonite Corp. v. Makerich Ltd [2002] 1 HKC 692, which was a design registered in respect of a "wheel assembly for an upright luggage case", and was hence held to be part of an article, namely the luggage.  Infringement was therefore found.

We note (with thanks to Pakpat World Intellectual Property Protection Services) that, following the Pakistan Registered Designs Ordinance 2000, it is possible to register the design of part of an article in Pakistan provided that the article can be made and sold separately.

These provisions all concern designs of separate parts of articles, rather than designs of integral portions of an article (or, viewed differently, portions of the design of an article).  In such cases, the former UK practice allowed the applicant to highlight the portion concerned by the use of dashed lines or a red ring, and then indicate that it was the novel portion in the "Statement of Novelty".  However, protection was still obtained only for the article as a whole, and whilst the result of the Statement of Novelty was to increase the importance of the highlighted features, it did not entirely eliminate others.  In that respect, the new European system (which clearly states that protection is available both for the design of a separate component part and for the design of part of a product, in other words an integral part) represents a significant advance in protection for applicants.