INTELLECTUAL PROPERTY RIGHTS AND MONOPOLY IN SHAPES, CONTAINERS AND OTHER COMMONPLACE ARTICLES

• Citation: (1993) 5 SAcLJ 197
• Published date: 01 December 1993
• Date: 01 December 1993

This article examines to what extent intellectual property rights can be used to obtain a monopoly in shapes, containers and other commonplace articles in view of the recent House of Lords decision in Rickett & Coleman Products Ltd.

Cases where attempts to extend a monopoly curtailed by the courts.

The House of Lords in two landmark decisions namely British Leyland Motor Corporation Ltd v Armstrong Patents Co Ltd1 and In re Coca Cola Co2 curtailed any attempts to extend or perpetuate a monopoly in commonplace articles by the use of intellectual property rights.

In the British Leyland case the plaintiffs were a well-known car manufacturer. In the course of designing and manufacturing a car, draughtsmen employed by the plaintiffs produced designs and engineering drawings for each component part of the cars. The defendants were component manufacturers who, without the consent or licence of the plaintiffs, copied various spare parts for the plaintiffs’ cars and then sold them in competition with the plaintiffs.

The defendants without having seen the plaintiffs’ design drawings, were able to copy the spare parts for the plaintiffs’ cars by means of a process known as reverse engineering, of copying the shape and dimensions of the plaintiffs’ own original parts. The plaintiffs brought an action against the defendants claiming damages for breach of copyright and seeking an injunction restraining the defendants from infringing the plaintiffs’ copyright in their drawings of various car components, as exemplified by the exhaust system of a particular car model manufactured by the plaintiffs. The plaintiffs conceded that the exhaust system itself was not capable of being patented and that the designs and drawings on which it was based were not registerable designs, but contended that the exhaust system itself was in effect entitled to the copyright protection accorded to artistic works by the Copyright Act 1956, because by s 3(1)(a) an artistic work included “drawings” and by s 48(1) “reproduction” of an artistic work included converting the work into a three-dimensional form. The trial judge and the Court of Appeal upheld the plaintiffs’ claim. The defendants appealed to the House of Lords.

Their Lordships held (Lord Griffiths dissenting) that the exhaust system copied by the defendants from the plaintiffs’ exhaust system by means of

reverse engineering infringed the plaintiffs’ copyright in the design drawings for their exhaust system, because the copyright in an artistic work extended to the reproduction of a purely functional object by means of indirect copying of a drawing or design of the object, even though the object itself might not be capable of being patented and its design might not be capable of being registered. However, the plaintiffs’ copyright was subject to the right of a purchaser of a car manufactured by them and of any subsequent owner of that car to keep the car in good repair and working order and for that purpose to have access to a free market in spare parts for the car and by analogy with the principle of non-derogation from grant, the plaintiffs were not entitled to use their copyright in such a way as to maintain a monopoly in the supply of spare parts for their cars. It followed that the plaintiffs’ copyright would not be enforced against the defendants and the appeal was allowed.

Another attempt to expand the boundaries of intellectual property and to convert a protective law into a source of monopoly was made in the House of Lords case of In re Coca-Cola Co3. This case was an attempt to use the Trade Marks Act 1938 as a source of monopoly.

The appellants had since the early 1920s sold in the United Kingdom a nonalcoholic beverage contained in bottles of a distinctive shape. They made applications under the Trade Marks Act 1938 for registration of the bottle as a trade mark in respect of non-alcoholic beverages. The alleged marks consisting of inter alia, “the distinctive shape and appearance applied to a bottle when used as a container for the goods …. as shown in the accompanying representation” and “a bottle of the shape shown in the representation.” The applications were refused by the hearing officer, whose decision was affirmed by Falconer J and the Court of Appeal.

On appeal by the applicants it was held, dismissing the appeal, that the word “mark” both in its ordinary meaning and its definition in s 68(1) of the Trade Marks Act 1938 was apt to describe something that distinguished goods rather than goods themselves. The function of the trade mark legislation was to protect the mark but not the article that was marked.

Lord Templeman stated as follows:-

“It is not sufficient for the coca-cola bottle to be distinctive. The Coco-Cola Co must succeed in the startling proposition that a bottle is a trade mark. If so, then any other containers or any article of a distinctive shape is capable of being a trade mark. This raises the spectre of a total and perpetual monopoly in containers and articles achieved by means of the Act of 1938. …….. In my opinion the Act of 1938 was not intended to confer the manufacturer of a container or on the manufacturer of an article a statutory monopoly on the ground that the manufacturer has in the eyes of the public established a

connection between the shape of the container or article and the manufacturer. A rival manufacturer must be free to sell any container or article of similar shape provided the container or article is labelled or packaged in a manner which avoids confusion as to the origin of the goods in the container or the origin of the article.”

Lord Templeman was of the view that the trade mark legislation is to protect the mark but not the article which is marked. Lord Templeman reaffirmed the decision in the case of In re James’s Trade Mark4 whereby Lindley LJ said that a mark must be something distinct from the thing marked. The thing itself cannot be a mark.

The importance of not allowing monopoly rights in shapes, containers and other commonplace articles was recognised more than 80 years ago in...