The expiration of design rights in a product does not mean that their erstwhile owner will no longer be entitled to prevent the unauthorised manufacture and sale of replicas.
In Numatic International Ltd v Qualtex UK Ltd (2010), the High Court established that passing off may be established based on the shape of an article in which the design rights have expired, where the shape had a secondary meaning.
Numatic manufacture well-known vacuum cleaners, the best known being “the Henry”, which had the following appearance (to quote the Court): “It is a tub type construction. It has a domed black lid which some people recognise as a bowler hat. Below the bowler hat it is red and there is a printed smiling face. The nose is the hole where the hose emerges from the side of the tub, and gives the appearance of an elephant's trunk when the hose is connected.” The design rights in this product had expired.
Qualtex exhibited a prototype of a competing product at an industry show, also having a bowler-hatted lid.
Click here to see the Numatic product on the left and the Qualtex prototype on the right.
Numatic instituted passing off proceedings against Qualtex. It was accepted that Numatic had a protectable reputation in the combination of features of the Henry vacuum cleaner (having the appearance of a small person and therefore a secondary meaning). The question was whether, given that reputation, the sale of the Qualtex prototype (which lacked the smiley face and name, but retained the shape and bowler hat) would make a damaging misrepresentation. The court held that the Qualtex prototype did convey quite a strong message that it was a genuine Henry, and there was a real likelihood that at least some members of the public would buy it thinking it was a Henry. It did not accept that the omission of the face and the name was sufficient to avoid passing off. It stated, “The public have been educated to recognise the overall shape combined with the black bowler hat as indicia of a genuine Henry. Once consumers think they recognise a product they do not necessarily conduct an analysis of all the reasons which have led them to that belief. They first have to pause sufficiently to notice the absence of the face and name. Like some of the witnesses, they may think that they have been taken off to give the Henry a more serious professional look.“