My Lords, let me reassure the noble Lord, Lord Clement-Jones, that I am not big enough to frighten the horses—a small group of chickens, maybe, but that is about it.
The benefit that we have in this Committee is that we can probe, which is what we are seeking to do, not to be obstructive or negative but genuinely to probe areas that are complicated, as the Minister himself recognises. My apologies for the length of the contribution, but it is meant in a constructive and positive way.
The amendment is a probing one, designed to understand the nature of the change and the reason for the meaning of “qualifying country”. The definition of the current UDR has come in for substantial judicial criticism. In Dyson v Qualtex, Jacob LJ referred to the existing wording of CDPA Section 213, subsections (1) to (4) and observed:
“It has the merit of being short. It has no other”.
That could be a description of myself. He went on,
“Jonathan Parker J. considerably understated the position, when he said ‘regrettably, the drafting of s.213 leaves much to be desired’. (Mark Wilkinson Furniture Ltd v Woodcraft Designs (Radcliffe Ltd) (1998 F.S.R. 63 at p.27). It is not just a question of drafting (though words and phrases such as ‘commonplace’, ‘dependent’, ‘aspect of shape or configuration of part of an article’ and ‘design field in question’ are full of uncertainty in themselves and pose near impossible factual questions). The problem is deeper: neither the language used nor the context of the legislation give any clear idea what was intended. Time and time again one struggles but fails to ascertain a precise meaning, a meaning which men of business can reasonably use to guide their conduct. The amount of textbook writing and conjecture as to the meaning is a testament to its obscurity”.
At present, Section 213(4) states:
“A design is not ‘original’ for the purposes of this Part if it is commonplace in the design field in question at the time of its creation”.
There is a nice bit of tautology for you.
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Our amendment in Clause 1(3) to Section 213(4) of the Copyright, Designs and Patents Act 1988 was prompted by the Chartered Institute of Patent Attorneys’ response to the consultation. It observed:
“If the term ‘commonplace’ is retained, it is sensible to ensure that the area of prior art is the same as the catchment area for qualifying individuals. Otherwise a qualifying person from, for example, New Zealand, could get unregistered design rights in the UK for a design which was commonplace in New Zealand, which we think this would be irrational, since such a design would not really be original”.
In their response, the intellectual property judges mentioned in the last amendment questioned whether the consultation question really understands the notion of “commonplaceness” as a matter of law.
The consultation document asserts at paragraph 4.14 that:
“UK courts have stated that the test for what is commonplace is what is widely available in the UK at the time”.
No authority is cited for this proposition, and we question whether it is correct. They refer to Copinger and Skone James on Copyright, 16th edition, at 13, which states:
“Although the 1988 Act does not make it clear, the fact that the 1988 Act is a territorial Act suggests that the relevant designer field is limited to the United Kingdom. However, this does not mean that the court must ignore the international position when determining what is or is not commonplace in the relevant design field. The issue is whether the design is commonplace and not whether an article made to that design is commonplace. Accordingly … it may well be that a design for an article only marketed abroad has become sufficiently well known to designers and the informed public in the UK to become commonplace”.
The City of London Law Society pointed out that commonplaceness is determined by reference to the design field, which could be international. It said that to extend the definition of commonplace to the European Economic Area would cause confusion and uncertainty. Currently the test is not consistent with other aspects of UK designs law. For example, in the Registered Designs Act 1949, the analogous concept of novelty covers the whole of the European Economic Area. The consultation suggested harmonising these provisions; it did not go as far as suggesting introducing the concept of novelty but did suggest widening the meaning of commonplace to ensure that designers in the UK will not unintentionally infringe a UK unregistered design right when they are building on ideas that they may have taken from elsewhere in the EU. The consultation also suggested it should mean what is commonplace in the EEA.
However, the Act now defines commonplace by reference to the EU. Why this change? Why not respond to the trenchant complaints made in response to the consultation? I shall quote from the consultation responses. CIPA remarked:
“There might be benefits in replacing the notion of ‘commonplace’ with the EU concept of novelty (i.e. differing only in material details from the prior art) applicable to other design rights, since novelty is generally more clear-cut”.
The ECTA, generally opposed to retention of the unregistered design right, observed:
“ECTA believes that adopting a position in conformity with the individual character test used in the EU design right would be a better route to follow”.
Richard Gallifen states:
“It does not seem otherwise than sensible to have the same definition of design across the entire spectrum of design protection”.
The previously mentioned group of IP judges also observed:
“The consultation fails to ask what is the point of having the requirements of originality in the copyright sense, and non-commonplaceness at all, and whether it would not be better to replace them by requirements of novelty and individual character”.
Given this barrage of concerns, will the Minister explain the reasoning behind the decision? I beg to move.