Hemalatha Ramulu discusses the impact of a significant recent Malaysian case.
 
In Veresdale Ltd v Doerwyn Ltd [2015] 7 MLJ 836, the High Court was required to consider whether certain motor spare parts qualified for protection as an “industrial design” under the Industrial Designs Act 1996 (“IDA”).
 
The plaintiff in this action had collaborated with the defendant to develop a new automobile and its various components and parts. The plaintiff successfully obtained registration for the “hood for an automobile” under Malaysian Design Certificate No. MY12-01583-0101 (“1583 design”), the “front bumper for an automobile” under Malaysian Design Certificate No. MY12-01584-0101 (“1584 design”), the “rear bumper for an automobile” under Malaysian Design Certificate No. MY12-01585-0101 (“1585 design”) and the “grill for an automobile” under Malaysian Design Certificate No. MY12-01586-0101 (“1586 design”) from the Malaysian Intellectual Property Office.
 
During the course of the collaboration, certain disputes arose and the parties sought from the Court a declaration as to whether the 1583, 1584, 1585 and 1586 designs should be excluded from registration, given the exclusionary portion of the definition of an “industrial design” under Section 3(1)(b)(ii) of the IDA.
 
The parties argued that although the IDA provided protection for features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged by the eye, this did not include, inter alia, features of shape or configuration of an article which are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part. On this basis and relying on the decision of the Registered Designs Appeal Tribunal in Ford Motor Company Limited and another, re [1993] RPC 399 Ch. D, the parties sought for declaratory reliefs that the 1583, 1584, 1585 and 1586 designs be expunged from protection as it was not disputed that the features of shape and configuration of these designs were very much dependent on the overall appearance of the automobile for which they were designed for.
 
THE “MUST MATCH” OR SPARE PART EXCEPTION
 
The definition of an industrial design under the IDA is in pari materia with the definition of a design under the then provisions of the United Kingdom Registered Designs Act 1949 (“UKRDA”) which was amended by the Copyright Designs and Patents Act 1988 (“CDPA”).
 
It is interesting to note that the 1988 amendments to the UKRDA viz Section 1(1)(b)(ii) came to exclude from protection features of shape or configuration of an article which are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part or otherwise colloquially referred to as the “must match” provision following the landmark decision in British Leyland Motor Corp Ltd & Anor v Armstrong Patents Co Ltd & Anor [1986] RPC 279. The decision in British Leyland Motor is important for the landscape of the law and in dealing with, inter alia, the intellectual property protection of articles that are sold as spare parts.
 
Briefly, in British Leyland Motor, the House of Lords was required to consider whether copyright protection ought to be appropriately afforded to the plaintiff for technical drawings for an exhaust pipe that were in effect articles likely to be repaired by owners and therefore purchasable as spare parts. The defendants in that case were suppliers of spare parts; particularly, spares for the exhaust pipe of the Leyland Marina manufactured by the plaintiff.
 
The House of Lords recognised that the then existing law in the United Kingdom had created an anomaly by wrongly extending copyright protection to industrial drawings of purely functional objects when they were neither registrable as a design for lacking eye appeal nor as a patent since they embody no new invention. This had resulted in the author acquiring an enduring monopoly for his lifetime plus seventy (70) years when that could not have been the intention of Parliament to do so.
 
Notwithstanding the above anomaly, the House of Lords, fuelled by policy reasons against denying car owners the right to repair, held that manufacturers of automobiles could not derogate from the grant of sale of the automobile to the owner the right to repair freely and that that right would be useless if suppliers of spare parts were not entitled to anticipate the need for repair. On that basis it was held that notwithstanding the copyright existing in the technical drawings of the exhaust pipes, the plaintiffs could not derogate from the grant of the sale of the Leyland Marina the right to the owner to freely repair it.
 
Subsequent to the aforesaid decision, there was a radical overhaul to the law in the United Kingdom which culminated in the CDPA, an unregistered design right system and appropriate defences in the copyright legislation as well as the inclusion of the aforesaid exclusionary spare part or “must match” provision in the UKRDA.
 
FORD MOTOR CO LTD’S DESIGN APPLICATIONS [1995] RPC 167
 
Subsequent to the 1988 reforms, Ford Motor Co Ltd and Iveco Fiat SpA filed a series of applications for various car parts including wing mirrors, seats, steering wheels, main body panels, doors, bonnet lids, boot lids and windscreens which were all rejected by the Designs Registry on the basis that those designs fell within the “must match” exception.
 
On appeal to the Registered Designs Appeal Tribunal (“RDAT”), the Registrar asserted for the first time that the designs of various car parts for which registration was sought were not registrable as they failed to satisfy the definition of an ‘article’. The RDAT made a distinction between wing mirrors, seats and steering wheels on the one hand as being registrable and main body panels, doors, bonnet lids, boot lids and windscreens on the other as falling foul of the definition of an ‘article’.  The RDAT found that parts such as main body panels, doors, bonnet lids, boot lids and windscreens were not ‘articles’ because, apart from forming part of a complete vehicle, they had no reality as articles of commerce.
 
The RDAT made a distinction between the two categories of articles also on the basis that with regard to the former, such parts should be distinguished from parts which, while in situ are contributing features to the appearance of the vehicle, are subsidiary to its essential shape. Therefore, parts such as wing mirrors, wheels, seats and steering wheels were found to contemplate substitutions where possible while leaving the general shape and appearance of the overall vehicle unchanged. The RDAT found therefore that, assuming that the latter category of parts were articles, they then consisted only of features which fell within the “must match” exclusion.
 
According to the reasoning of the RDAT, these parts form part of and contribute to the overall shape and appearance of the vehicle and therefore are excluded from design protection. Ford Motors sought judicial review but the Divisional Court of the Queen’s Bench Division largely upheld the RDAT’s decision. Ford Motors appealed to the House of Lords.
 
The House was called upon to answer amongst others (i) whether objects which are spare parts for other objects are “articles” within the meaning of the UKRDA; and (ii) what was the true construction of section 1(1)(b)(ii)?
 
THE DEFINITION OF AN ARTICLE
 
In considering the first question, the House of Lords was required to look at the definition of an “article” under the UKRDA which defined an article as “any article of manufacture including any part of an article if that part is made and sold separately”. In this regard, the House of Lords cited with approval the interpretation given to the definition of an “article” in Sifam Electrical Instruments Co Ltd v Sangamo Weston Ltd [1973] RPC 899. In this case the words “any article of manufacture including any part of an article if that part is made and sold separately” were interpreted to refer to an article that is intended by the proprietor of the design to be put on the market and sold separately. It was held that the phrase “if that part is made and sold separately” must be intended to mean that both the manufacture and sale of the part in question must be operations which are distinct from the manufacture and sale of the whole article of which the part forms a component.
 
Applying the above, the House of Lords held that in order to satisfy the requirement of an “article”, it is not sufficient that the part concerned is made and sold simply as a spare part for the greater article; it must in addition “have an independent life as an article of commerce and not be merely an adjunct of some larger article of which it forms part.”
 
The House then went on to approve the distinction drawn by the lower courts between the category of items which would be sold simply as spare parts and items such as wing mirrors, seats and steering wheels where customers might buy fancy designs for their own sake and not merely as replacement spares. Insofar as the latter category was concerned, the House referred these as “proprietary” articles susceptible of being made and sold separately and therefore, not precluded from being registered. On that basis the House rejected the applications to register designs in respect of components for cars such as main body panels, doors, bonnet lids, boot lids and windscreens and allowed items such as wing mirrors, seats and steering wheels.
 
The House thereafter declined to consider the construction to be given to the “must match” exception because of their conclusion that the parts sought to be registered were not in any event articles “made and sold separately”. As regards the approach taken by the RDAT and the Courts below (where the latter had found that in any event components for cars such as main body panels, doors, bonnet lids, boot lids and windscreens fell afoul of the “must match” exception since there was no design freedom for the suppliers of this category of parts having regard to the need to conform with the overall design of the car as a whole), the House commented that ex hypothesi the design for a component part of a vehicle is constrained in some degree by the appearance of the vehicle for which it was designed, and there would not be many cases where the said component would be adaptable enough to be accommodated within another vehicle if it were to be an independent article of commerce.
 
Their Lordships found the second question of no utility and no answer was provided in respect of the construction to be given to the “must match” exclusion.
 
THE DEFINITION OF AN ARTICLE UNDER THE IDA
 
The definition of an article under the IDA is largely borrowed from the definition of an article under the UKRDA after amendments were made to the former through the Layout-Designs of Integrated Circuits Act 2000. The IDA now defines an article as “any article of manufacture or handicraft, and includes any part of such article or handicraft if that part is made and sold separately but does not include an integrated circuit or part of an integrated circuit within the meaning of the Layout-Designs of Integrated Circuits Act 2000, or a mask used to make such an integrated circuit.”
 
The requirement that component parts should satisfy the requirement that they be manufactured and sold separately is very much entrenched and therefore it must only be concluded that when considering the registrability of features of shape and appearance of spare parts, it would be critical for car manufacturers to consider whether or not the article or parts of the article to which the design was applied satisfies the definition of an article to begin with.
 
CONCLUSION
 
In Veresdale, the parties had conceded that the designs for which the 1583, 1584, 1585 and 1586 certificates were granted were in fact dependent upon the appearance of the automobile for which they were designed and sought that they be expunged under Section 3(1)(b)(ii) of the IDA. Given these constraints, the Court had rightly granted the relief sought. It is submitted however that in view of the decisions in Sifam Electrical Instruments and Ford Motor Co Ltd’s Design Applications, it would appear that a higher threshold is required to be satisfied which is to first consider, whether the articles to which the 1583, 1584, 1585 and 1586 designs were applied fell within the definition of an “article” under the IDA.
 
In conclusion it may be surmised further that given that the IDA was enacted well after the 1988 reforms were brought about in the United Kingdom, and the definition of an article as well as the “must match” exclusion in the IDA was borrowed almost word for word from the UKRDA, the policy against which the design protection of spare parts operates in the United Kingdom applies here in Malaysia as well.