As discussed throughout this volume, utility models are a form of intellectual property law that offer protection for ‘minor inventions’ through a regime similar to the patent system.Footnote ¹ The German gebrauchsmuster, introduced in the 1891 Utility Models Act, is widely regarded as the prototype for such second-tier protection.Footnote ² Indeed, Hausser (Reference Hausser1987) said that ‘the utility model, as an industrial property right, was “invented” in Germany’.Footnote ³ Utility models have also been seen as foreign to the United Kingdom. The Department of Trade and Industry’s Green Paper on Reform of the Law relating to Copyright, Designs and Performers’ Protection (1981), a follow up to the Whitford review of the British law of copyright and designs, declared that the United Kingdom has ‘set its face’ against such a scheme.Footnote ⁴ In this chapter, we argue that while it has often been suggested that utility models are a product of late nineteenth-century German thinking and that they are foreign to the United Kingdom, utility model protection was first introduced to the United Kingdom in the Utility Designs Act 1843.Footnote ⁵ As such, it is clear that utility model protection has a long-established (albeit somewhat tarnished) pedigree in British law and that utility model protection came into force in the United Kingdom some fifty years before its German counterpart. In this chapter we highlight the key features of the Utility Designs Act 1843, the way the Act was received, and speculate on the reasons why the Act was forgotten.

3.1 The Background to the Utility Designs Act

In the early part of the nineteenth century, patent law in the United Kingdom, which was a blend of custom, prerogative, statute law and judicial intervention, was a mess. As the 1829 Select Committee investigation revealed, there was uncertainty over what was protectable, over the nature and function of specifications, and of the role of claims and drawings.Footnote ⁶ Moreover, the system for the administration of patents that existed at the time was complex: in order to obtain a patent for the whole of the United Kingdom, patent applications had to be lodged in offices in London, Edinburgh and Dublin. In order to obtain an English patent,Footnote ⁷ applicants needed approval from at least eight offices.Footnote ⁸ The upshot of this was that the procedure for the grant of patents was both time-consuming and costly. As the Report on the Signet concluded in 1849, ‘the number of successive stages through which a patent for a new invention must pass before its final completion is productive of great trouble, delay and expense to the party seeking the grant, without any corresponding benefit to the public’.Footnote ⁹ Furthermore, it was very difficult to ascertain the nature of pre-existing patents because existing patent specifications were (until January 1, 1849) deposited in any of three offices (Rolls, Petty Bag and Enrolment) so all three had to be searched in order to ascertain whether an applicant’s invention was new and therefore whether any resulting patent would be valid.Footnote ¹⁰ The complex nature of patent administration not only meant that it was very difficult to ascertain the nature of pre-existing patents,Footnote ¹¹ it also had knock-on effects for the cost of a patent, which in the 1830s might be as much as £250 or £300.Footnote ¹² One commentator, using the soubriquet ‘Vindicator’, bemoaned in 1835 the ‘exorbitant fees demanded, paid to and received by certain automatons who represent certain antiquated bags and things, whose vested interests are deemed sacred’.Footnote ¹³

If obtaining patents was problematic, so too was their enforcement, which could be very expensive and time consuming.Footnote ¹⁴ Although interim injunctions were readily granted in relation to patents that had subsisted for some time,Footnote ¹⁵ infringement was determined through proceedings at law, which required a trial (at so-called ‘nisi prius’) and was then usually subject to legal review by the relevant court (Common Pleas, Exchequer or Queen’s Bench) sitting in full (with the possibility of further trials and further reviews). However, to obtain relevant evidence, proceedings first had to be commenced in Chancery seeking ‘discovery’. Writing to the Morning Chronicle, Cornelius Ward (a woodwind instrument maker who had patented a drum and a flute) cited a situation where a patentee decided against litigating ‘for fear of the direful expense and hopeless chicanery of law’.Footnote ¹⁶ And at a meeting of the Inventors Patent Law Reform League early in 1851, the chairman reported an instance of litigation over a patent for military drums that had lasted for five and a half years at an expense of £7,000.Footnote ¹⁷

A second significant aspect of the intellectual property landscape was the early system of protection for designs.Footnote ¹⁸ In the late 1780s, protection was provided by Parliament to the designers of patterns for printed calicos, linens, cottons and muslins.Footnote ¹⁹ While this protection was initially limited to two months, in 1794 it was extended to three months.Footnote ²⁰ By the 1820s and 1830s, calls were made for extension of these laws to cover a wider array of designs and for the lengthening of the term of protection. In the 1830s this movement for reform was linked to arguments for reform of the law and administration of letters patent, through proposals for the introduction of laws of ‘art and manufacture’.Footnote ²¹ While it ultimately proved impossible to obtain any real reform of patents, the push for the protection of designs bore fruit in the form of the Design Registration Act 1839,Footnote ²² which provided up to three years protection, on registration, to designers of the shape and configuration of any article of manufacture.

While the 1839 Design Registration Act brought about a number of significant changes, it was soon replaced by two new Acts. The first was the Ornamental Designs Act 1842, which gave protection to designs for purpose of ornamenting any article of manufacture.Footnote ²³ The other Act, which was passed the following year, was referred to variously as the Utility Designs Act, the Non-Ornamental Designs Act, the Utility Registration Act, the Configuration Act, the Registration Act, and (perhaps facetiously) ‘the Useful Act’.

The main impetus for reform was that the designers of patterns for cloth printing, previously protected automatically under the Calico Printers Acts, decided that they were prepared to accept registration as the quid pro quo for extension of the term of protection from 3 months to 9 months.Footnote ²⁴ At the same time, the Registrar of Designs, F. B. Long, took the opportunity to rectify problems in the operation of the 1839 Registration Act.Footnote ²⁵ The vague language of that Act, which The London Journal of Arts and Sciences described as ‘an undigested chaos of confusion, inutility and obscurity’Footnote ²⁶ had led to the registration of many designs for objects of utility (some of which were enforced successfully, as in Grassby v Westerdale (Patrington petty sessions 1842),Footnote ²⁷ while others were treated as invalidly registered: Evans v Harlow (Stockport Borough Court 1843)). In response, the Registrar recommended that the Board of Trade remove the incentives to register such shapes as ornamental designs by establishing a separate regime. The Board of Trade did this through the Utility Designs Act.Footnote ²⁸

The Utility Designs Act 1843 (UDA) protected ‘any new or original Design for any Article of Manufacture having reference to some purpose of Utility, so far as such design shall be for the Shape or Configuration of such Article’. Protection under the Utility Designs Act 1843 (as under the 1839 and 1842 Acts) required application to the Design Registry and, once granted, lasted for three years. The application was required to include a title, two drawings of the design, and such description in writing as was thought necessary to render the same intelligible.Footnote ²⁹ According to the rules, the description was required (i) to indicate the useful purpose; (ii) distinguish the several parts of the design by reference to letters, figures or colours; and (iii) indicate which parts were not new and original.Footnote ³⁰ The drawings were to be no more than 24 inches by 15 inches and ‘on a proper geometric scale’ (UDA 1843, s. 8). The price of registration was £10.Footnote ³¹ Importantly, and in contrast to the Ornamental Design Act 1842, registrations were – like patent specifications – open to the public,Footnote ³² and the titles of all the registered useful designs were widely circulated.Footnote ³³ However, copying of the designs was not permitted until the rights had expired.Footnote ³⁴

The scope of the new right was defined and its enforcement regulated by reference to the Ornamental Designs Act.Footnote ³⁵ This meant that the right was infringed by applying ‘any such design, or any fraudulent imitation thereof for the purpose of sale, to … any article of manufacture, or any substance’ or publishing, selling or exposing for sale any such article or substance to which the design had been applied, knowing that consent had not been given to such application. In addition to proceedings for damages, and in Chancery for an injunction, remedies included the recovery of penalties of £5–£30 per offence (though not to exceed £100 per person per design), as well as costs, by way of an action for debt, an action on the case, or by way of summary proceedings before two magistrates.Footnote ³⁶ Fifteen years later, the county court was also explicitly given jurisdiction to hear cases and award damages.Footnote ³⁷

3.2 Reception of the Utility Designs Act

The Utility Designs Act 1843 received a mixed reception. While some commentators welcomed the new regime, others, who complained that the Act was anything but transparent,Footnote ³⁸ likened it to an attempt to present a picture to one ignorant of anatomy by using ‘dry bones’.Footnote ³⁹ Beyond these criticisms of the nature and form of the Act, a more serious dispute arose as to the relationship of the utility design system to the patent system: a matter over which the 1843 statute said nothing. The question of the relationship between the two legal regimes, which became more heated as the Utility Designs Act increased in popularity,Footnote ⁴⁰ was played out in tracts, textbooks and in such specialist periodicals as the London Journal of Arts and Sciences, the Repertory of Patent Inventions, and the Mechanics’ Magazine. While views on this matter varied somewhat, they fell into two general approaches.

On one hand, commentators such as Alexander Prince, Joseph C. Robertson (Editor of the Mechanics’ Magazine) and Thomas Turner (barrister and legal commentator) took the view that the Utility Designs Act and the patent system were alternative ways of protecting mechanical devices. Under this view, applicants could elect between the protection offered by the Utility Designs Act, which cost £10 for three years of protection throughout the whole nation and the patent system, which cost £300 but lasted for the longer term of 14 years. As the Mechanics’ Magazine explained:

Other commentators such as William Carpmael (patent agent), William Spence (patent agent) William Hindmarch (barrister) and Thomas Webster (1811–1875, barrister and from 1865 QC) took a different view, arguing that the subject matter of each system was essentially distinct. In particular, they suggested that the Utility Designs Act merely protected the form of an article, whereas patent law protected the ‘principle’ by which an invention worked, that is, its ‘function’.Footnote ⁴²

The divergence of opinion played an important role in the way the Utility Designs Act was perceived, utilised and evaluated. For example, the way the Act was interpreted influenced the way its success was measured. For those who took the view that the Act was ‘an act to make patents cheap’, its success was judged in terms of whether it offered a speedy, simple and cheap system of registration: irrespective of what was actually registered. As such they welcomed the registration of table lamps, ball cocks, heel tips, screw wrenches, sash fastenings, weft distenders, light reflectors and pneumatic life preservers which occurred in the first month of the Act’s operation.Footnote ⁴³ For those who took the view that the Utility Designs Act merely protected the form of objects, most of these registrations were thought to be mistaken and worthless.Footnote ⁴⁴ Carpmael called the Act ‘a perfect curse’ that had produced ‘most pernicious results.’Footnote ⁴⁵ According to Webster, registration was tantamount to robbery.Footnote ⁴⁶

3.2.1 The Nature of the Conflict

At one level, the conflict over the appropriate scope of what ought to be registered under the 1843 Act was expressed in two different though related ways. The first turned on the notions of ‘form’ and ‘principle’. For the proponents of the narrow view, the scope of the Utility Designs Act was confined to the outward or visible form of the object registered. It was said that form only extended to encompass principle – which was taken as the primary concern of patents – in the very limited circumstance where the form of the article happened to be the only shape that could be used to perform the function in question. This meant, for example, that while the Utility Design Act could protect the form of the stem or oil vessel of a table lamp, it could not protect any new way of raising the wick in the lamp or supplying the lamp with air.Footnote ⁴⁷ Given the belief that utility model protection was limited to the visible exterior form of objects while patent protection extended to principles, and that form and principle were readily separable, those who favoured the narrow view were able to deny that there was any real overlap between the two systems of protection.Footnote ⁴⁸ In contrast, the proponents of the broad view of the Utility Designs Act took a different view of the ‘form/function’ dichotomy. For these commentators, the divergence between form and principle was much less clear. As Robertson, writing in the Mechanics’ Magazine, explained:

We really see it as a matter of some difficulty to imagine any cases of mechanical improvement which will not come within the exceedingly comprehensive terms of this Act. Such an invention as Watt’s great discovery of condensing in a separate cylinder might possibly fall without the line; but the direct-setting engine, the oscillating engine, and a score of others of the like character, would as undoubtedly fall within it. All paddle-wheels, and all stern-propellors would be most clearly included. So would all agricultural machines; all railway bars, chairs, sleepers etc; all wood pavements. In short, mere processes only, and such chiefly as are of chemical description, will be excluded.

Arguing that every principle presumed some understanding of form, it was said that the two concepts were inseparable. Or, as Turner said, ‘you cannot have principle without special form, more than you can have respiration without lungs’.Footnote ⁴⁹

The second issue that distinguished the conflicting views of the Utility Design Act related to the way the design was represented. More specifically, it turned on a difference of opinion over how the visual and textual elements of the design registration were construed and the relative weight that each played in determining the scope of the property protected. It is important to recall that when registering a design, applicants were required to include three things: a title, two drawings of the design which were to be no more than 24 inches by 15 inches and on a ‘proper geometric scale’, and such description in writing as was thought necessary to render the same intelligible. In practice, the representations varied, with many (especially those prepared by registration agents) including lengthy written explanations of the drawings. For example, Registration Number 9, for an improved ball cock (Figure 3.1) (which had been drafted by Joseph Robertson) included two figures and the following description:

Fig. 1 is an external view of the ball cock. Fig. 2 is a sectional view. A is the water supply pipe. B is the ball cock which is connected to the supply pipe by means of a spur C and hinge D …

CLAIM

The parts of the said design which are not new or original are the branch A of the supply pipe and the ballcock B. The parts claimed as new are FIRST the spur C and hinge D by which the ballcock B is attached to the branch A of the supply pipe and SECOND the branch A2 of the supply pipe with the valve box F and Valve G attached thereto.Footnote ⁵⁰

Figure 3.1 Improved ball cock, registered on September 9, 1843, by Robert Wilkins (with J. C. Robertson and Co as registration agent): BT 45/1/9

When proponents of the narrow construction of the 1843 Act spoke of the outward form of objects, they meant the visible form which was represented in the drawings of the design. In this situation visual representation was assumed to have two characteristics: first, it was believed that drawings were capable of being appreciated and understood by any viewer; there was no specific knowledge or skill required to interpret the visual element of the design application. Secondly, the drawing or visual representation operated to confine protection to the detailed specific embodiment that was found in the registration. In this context, the textual features of a utility design application, which the Act required applicants to submit in order to render the drawing intelligible, were seen to perform the limited role of enabling the new and old elements of the shape to be differentiated: the text played no role whatsoever in understanding the drawing and thus determining the property protected. In contrast, these commentators believed that patents captured the essence of the invention – the principle – through the medium of text, that is, the patent specification: a document which was interpreted from the standpoint of the community skilled in the art and in such a way that the protection encompassed multiple embodiments.

While those who favoured a narrow reading of the 1843 Act prioritised the visual representation of the design over its textual supplements, opponents of this approach took a more open view of the relationship between the visual and the textual. Moreover, for this group the roles of the divergent techniques of representation – visual and textual – were by no means as fixed as the proponents of the narrow view made out. That is, they did not think that there was a single, universal relationship between text and image. Instead, they were able to imagine diverse ways in which text and image might interact in identifying an intangible object or subject matter of rights.

Proponents of the more expansive view of the 1843 Act differed from those who construed it more narrowly in two more specific ways. First, some of those who favoured a more open interpretation of the 1843 Act argued that visual representation was not as confined, specific and limiting as had been suggested. Importantly, this meant that the protection offered to registered designs extended to include geometrically different shapes which were functionally equivalent. This more expansive understanding of visual interpretation was based on the idea that visual representations did not require universal understanding. Rather, the visual representations were to be interpreted by a skilled community, a community which would understand the essential rather than the accidental shape of the article.Footnote ⁵¹ As one commentator observed,

[T]he essential and important shape and configuration of an article of utility is not by any means necessarily outward and manifest, but may be such as can only be carefully appreciated by persons conversant with articles of its class …

In addition, based on the idea that ‘a word gives the essential principle of a shape’,Footnote ⁵² it was also suggested that while visual images were capable of being interpreted in different ways, the text which was attached to the drawings informed the way the image could be construed. Specifically, it was argued that the text tied down the meaning of the visual image, allowing the image to constitute the basic representation of even functional attributes of the protected design.Footnote ⁵³

3.3 Judicial and Administrative Responses

Although the 1843 Act allowed the Registrar to reject non-ornamental shapes from the register of ornamental designs under the 1842 Act, the Registrar was unable to reject an application from the utility designs register on the ground that the application was properly the subject of a patent.Footnote ¹¹⁸ Nevertheless, shortly after the 1843 Act came into force on September 9, 1843, the Registrar issued a noticed stating that no design

Quite what was the legal basis for this notice (and the practise it purported to foreshadow) is unclear,Footnote ¹²⁰ but the notice was influential. The London Journal of the Arts and Sciences, edited by the patent agent William Newton, which had regarded the scope of the Act as ambiguous,Footnote ¹²¹ narrowed its position in response saying that interpretation of the Utility Design Act as protecting inventions involved a ‘misconception’,Footnote ¹²² and after listing the titles of designs registered under the 1843 Act, repeatedly warned readers of the dangers that these registrations were invalid.Footnote ¹²³ The Registrar’s notice had also emphasised that decision to register was a matter of personal risk for applicants.

As the patent agent William Spence pointed out, the subject matter and scope of protection under the Utility Design Act was not a matter that could be resolved administratively: it turned on the judicial interpretation of the Act. Unfortunately, a clear resolution of the different interpretations was unlikely. This was because proceedings to enforce the rights of registrants could be brought before magistrates and most complainants chose that course. If the Utility Design Act was an act to make patents cheap, and in the absence (until 1846) of a cheap county court,Footnote ¹²⁴ there was a certain logic to their being enforced in the police courts which were thought of by some as a ‘poor man’s court’.Footnote ¹²⁵

It was the view of contemporaries that the 1843 Act had not generated a great deal of litigation.Footnote ¹²⁶ In the period between 1843 and October 1852 (when the Patent Law (Amendment) Act 1852 came into operation), there were at least twenty-four sets of proceedings before magistrates for infringement under the Utility Design After Act (see Appendix 1). All but one (Twigg v Kemp (Public Office, Birmingham 1848)) were brought in London, including sixteen at the police court in the Guildhall. Just under half of the cases resulted in the defendant being fined – though the convictions in Motte v Welch and Dixon v Bessell (1850 Guildhall Police Court) were overturned. The fines were mostly £5, often referred to as the ‘mitigated penalty’ applicable where the accused undertook not to repeat the offence, but in at least one case, Margetson v Wright, the defendant made no such undertaking and the penalty (a mere 20 shillings) was insufficient to deter further infringements. Complainants do not seem to have sought to exploit the potential for very significant penalties through cumulation of the fine on a per article basis (up to a maximum of £100).Footnote ¹²⁷

The issue of the relationship between design and patents was raised in many of the design cases by defendant’s counsel. The argument was usually made that the subject-matter for which protection was being sought was properly a matter for the patent regime and thus the registration was invalid. In Wolferstan v Warner (Guildhall Police Court 1845), concerning an improved boiler tap (Figure 3.2), William Clarkson argued that

by endeavouring to evade the expense of taking out a patent at an expense of as many pounds as he had paid shillings for the registration, had overreached himself. The part for which registration had been obtained was a mechanical contrivance, and not a mere change of form or configuration, to which alone that act applied.Footnote ¹²⁸

Figure 3.2 ‘Safety boiler tap’ registered by Thomas Wolferstan on May 28, 1844, and litigated in Wolferstan v Warner (November 5, 1844, Guildhall Police Court): BT 45/1/190

The defendant raised other objections (including that the designs were different in important ways, and that the complainant had not marked all the taps sold with the word ‘registered’ as required by the 1843 Act). Although the magistrate dismissed the summons, the aldermen refused to explain their decision, so it was not clear whether doubts about whether the tap was eligible for protection influenced the decision (and the arguments of counsel were a subject of trenchant criticism in the Mechanics’ Magazine (1844) 41: 331).

In Webb v Hughes (Guildhall Police Court 1847), the claimant’s registration (Figure 3.3) related to a tray for storing lace ribbon; the defendant registered (Figure 3.4) and sold an improved version adapted to store more lace.Footnote ¹²⁹ Clarkson, again appearing for the defendant, argued that the ‘Act had reference only to matters of form. It was nothing that the same principle or idea was taken, if the form and means were different. Principles were protected by patent law, and mere shape by the registration law’.Footnote ¹³⁰ The argument did not seem to land: the magistrates declined to decide the case, one thinking there was infringement, the other finding that the defendant’s design was sufficiently different from Webb’s and as such that there was no infringement.Footnote ¹³¹ In Haynes v Brown (Guildhall Police Court 1848), concerning the design of a windlass controller, Benjamin Rotch and William Clarkson argued that as the complainant had themselves applied for a patent, the registration under the Utility Design Act was evidently invalid:

The magistrate dismissed the complaint, but on the basis of the absence of novelty of the design (given prior disclosure).

Figure 3.3 ‘Protection rouche tray’ registered by George Webb on January 13, 1847, and litigated in Webb v Hughes (April 12, 1847, Guildhall Police Court): BT 45/5/920

Figure 3.4 ‘Protection rouche tray’ registered by Hosketh Hughes on February 25, 1847, and litigated in Webb v Hughes: BT 45/5/977

In three cases, the magistrates seem to have taken the broad view of the Act. In Fox v Evans, (Guildhall Police Court 1848) the magistrates found infringement of the complainant’s ‘Alarum for time pieces’ (Figure 3.5) because the defendant reproduced the dial, even though the defendant’s version had no alarm. The magistrates, Aldermen Finnis and Lawrence, were unmoved by the fact that the clocks involved different mechanical mechanisms. In Dixon v Bessell (Guildhall Police Court 1850), in relation to a ventilator in a window (Figure 3.10), Alderman Wilson expressed the view that Dixon’s design was so ingenious that he deserved at least seven years protection and the defendant had engaged in ‘bare-faced piracy’. In neither Fox nor Dixon was the defendant represented by counsel, and likely the tribunal was not exposed to the narrow reading of the Utility Design Act. In contrast, in Motte v Welch (Guildhall Police Court 1850), concerning a registered design for an improved portmanteau (Figure 3.6), the defendant’s counsel explicitly argued that as the improvements involved the use of rivets rather than sewing and the use of one piece of leather, rather than several, there was no new shape and thus no new design. Nevertheless, having heard copious evidence, Alderman Challis found for the registrant.

Figure 3.5 ‘Alarum for time pieces’ registered by Edward Fox and James Brown on July 25, 1846, and litigated in Fox v Evans (May 6, 1848 Guildhall Police Court): BT 45/4/776

Figure 3.6 ‘Design for an improved portmanteau’ registered for Auguste Motte on July 23, 1849, and litigated in Motte v Welch (March 30, 1850 Guildhall Police Court) and Motte v Lancaster (June 19, 1850 Guildhall Police Court) : BT 45/10/1970

Sometimes a narrow view of the Utility Design Act clearly motivated the decision of the tribunal. In Kennedy and Asprey v Coombs and Finlay (Marlborough Street Police Court 1845), the registration, which was drafted for the complainants by J. C. Robertson & Co, was for ‘an improved portable ink and light box for writing desks and travelling cases’ (Figure 3.7). The novelty lay in the hinging which enabled the lid of the box to be thrown back without pulling its base from the case. The experienced magistrate, John Hardwick, seems to have accepted Thomas Webster’s submission that the novelty was a matter of mechanical contrivance rather than a new design in shape or configuration. Dismissing the information, the magistrate explained:

Figure 3.7 ‘Improved portable ink and light box’ registered for Francis Kennedy and Charles Asprey on August 27, 1844, and litigated in Kennedy and Asprey v Coombs and Finlay (February 15, 1845 Marlborough St Police Court): BT 45/2/255

In Woolley v Warner (Guildhall Police Court 1845), the dismissal of the action also seems to have turned on the view that the registered design was really an invention outside the Utility Design Act. The registration was entitled ‘Improvements in the shape and configuration of lamps and apparatus connected therewith for the burning of oil of turpentine, camphine, naptha etc.’ (Figure 3.8). The description identified which of the different components were new and old. In defence, Clarkson argued that ‘any new mechanical action must, it is clear, be the subject of a patent’. Benjamin Rotch, counsel for the complainant, responded that he did not admit that. Nevertheless, the information was dismissed. Alderman Hughes Hughes – who, unusually for an alderman, had something of a legal backgroundFootnote ¹³² – said he was satisfied that ‘it was a new application of a mechanical action and not a mere alteration of form or configuration’, a conclusion with which Alderman Charles Farebrother agreed.Footnote ¹³³ The decision received some criticism in Robertson’s Mechanics’ Magazine, albeit attributed to ‘Civis of Gray’s Inn Square’.Footnote ¹³⁴ When reflecting on the fact that many of the prosecutions in the police courts had been unsuccessful, the barrister Thomas Turner explained that this was attributable to ‘fastidiousness about mechanical action, etc.’

Figure 3.8 ‘Improvement in the shape and configuration of lamps’ registered for Fletcher Woolley on February 21, 1844 (and litigated in Woolley v Warner (March 22, 1845 Guildhall Police Court): BT 45/1/127

A writer in the legal journal The Jurist, using the initials ‘G.S.’, referred to the ‘known incompetency’ of the justices,Footnote ¹³⁵ adding that ‘such functionaries are naturally averse to be troubled with discussions for which they are so little qualified by education or habit’. The aldermen who sat in the police courts at the Guildhall were often businessmen rather than lawyersFootnote ¹³⁶ and, despite having a legal clerk,Footnote ¹³⁷ frequently seemed uncomfortable with their responsibilities. Writing to the Mechanics’ Magazine after the first two decisions of the aldermen, S.Y. observed that ‘the persons appointed by the Act to settle disputed points, are those most likely to prove unable to comprehend the merits of the question on which they have to decide, and […] are in every way irresponsible for their decision’.Footnote ¹³⁸ Reflecting this, the Guildhall judges seemed to have looked for ways to avoid dealing with the complaints. As Turner put it, the aldermen took ‘prejudices and crotchets on the points of interpretation that arise’.Footnote ¹³⁹ Thomas Webster gave a similar assessment to the Select Committee on the Protection of Inventors Bill (in March 1851) thatFootnote ¹⁴⁰

There was certainly evidence to support such a conclusion. In an early case, Margetson v May (Guildhall Police Court 1844), concerning the design of a shirt collar (Figure 3.9), one of the magistrates, Alderman Charles Farebrother, an auctioneer, had been inclined to dismiss the proceedings because the matter was too trivial (though he was persuaded by his colleague not to do so).Footnote ¹⁴¹ In Wolferstan v Warner (Guildhall Police Court 1845), the aldermen concluded that the complainant had not established its case, but when counsel asked in what respect, the alderman, Sir George Carroll, a stockbroker, refused to explain. In contrast, other magistrates thought that the issues were so serious that they were better dealt with elsewhere. In Besley v Gallie (Bow Street Police Court 1848), dismissing the summons on a technical point (that it was not sent to the defendant’s residence as opposed to its business premises), the Bow Street Magistrate, barrister David Jardine (d. September 1860), said he thought the matter ‘far too important to be disposed of by a magistrate in a summary way. It was quite foreign to the general business of the police courts’.Footnote ¹⁴²

Figure 3.9 ‘Improved collar’ registered for Welch, Margetson & Co on February 29, 1844, and litigated in Margetson v May (October 1844 Guildhall Police Court): BT 45/1/133

One can easily imagine that the magistrates were ill at ease, as the cases often involved difficult points of law (particularly in terms of the relationship between patents and the Utility Design Act), whereas their usual diet would have been making findings of fact.Footnote ¹⁴³ Moreover, the magistrates may have also resented the amount of time the cases were taking: the magistrates had plenty of work and were used to resolving matters speedily – ‘the justice that was meted out at the police courts could be very abrupt’.Footnote ¹⁴⁴ Certainly those that reported the cases on designs noted that they consumed a considerable time.Footnote ¹⁴⁵ On the other hand, it may be that some of the tribunals overcame their initial discomfort, particularly at the Guildhall Police Court given the frequency of hearings.Footnote ¹⁴⁶ In Motte v Welch (Guildhall Police Court 1850), Alderman Challis initially asked counsel to present more evidence and in his conclusions explained that he had given ‘a great deal of time and careful attention to this case, in order that it might not be said he had decided hastily’.Footnote ¹⁴⁷ The result was overturned, but the tribunal had certainly done its best.

While patent barristers such as Turner and Webster might have been able to point to instances such as these to justify their criticisms of the magistrates, their views might also have been informed by the fact that the day-to-day operation of magistrates was unfamiliar to them. Magistrates were used to exercising a wide degree of freedom which they often used to ensure that the outcome was consistent with their vision of their role.Footnote ¹⁴⁸ One wonders whether the criminal barrister William Clarkson would have shared Webster’s view: the reports identify him as counsel in nine such prosecutions, four times for the complainant and five for the defendant, with a 75 per cent success rate (six wins, two losses, the ninth case being undecided). He probably had a better idea as to how to present cases to magistrates. Moreover, one might wonder what a criminal law barrister might have made of the practice of trying patent cases before juries (the value of which were increasingly questioned during the 1840s).Footnote ¹⁴⁹ Even with the widespread use of special juries,Footnote ¹⁵⁰ the outcomes were hardly always satisfactory. In Ward v Key (nisi prius, 1847), for example, the jury initially ignored Cresswell J.’s instruction to find that the defendant had not infringed, finding (as it seems all juries did at that time) for the plaintiff patentee. However, the jury revisited the matter when the judge explained to it that if it did not so find, the members would face the prospect of being compelled to hear the defendant’s witnesses. Evidently, the lengthy and hugely costly processes of patent litigation were not guaranteed to produce just results.

Perhaps most significantly, the magistrates were not a suitable vehicle for establishing precedent. Not only were the cases reported inconsistently and sparingly in the newspapers,Footnote ¹⁵¹ the magistrates rarely reserved judgment and never offered more than the briefest of reasoning. While many of the outcomes were noted in periodicals of interest to inventors (such as Robertson’s Mechanics’ Magazine or Newton’s London Journal) and made their way into commentaries, these were not as precedents so much as indications of the inclinations or instincts of these tribunals. It is fair to say that the magistrates mostly preferred the narrow interpretation of the Utility Designs Act of the likes of Carpmael to the broader reading of Robertson and Prince – but whether this was because they wanted to minimise this part of their workload, avoid the consequences of wrongfully convicting a defendant,Footnote ¹⁵² or because they thought this was the best interpretation of the statute, is difficult to say.

There was no appeal from the magistrates,Footnote ¹⁵³ but proceedings could be taken to have their decisions quashed by way of the writ of certiorari,Footnote ¹⁵⁴ and an authoritative view of the Utility Design Act was most likely to come from such decisions. This was the course of action taken by the defendants in Motte v Welch (Guildhall Police Court 1850) and Dixon v Bessell (Guildhall Police Court 1850). In R v Welch (Queen’s Bench 1851), Lord Campbell overruled the magistrates’ decision because of a technical defect, but in R v Bessell (Queen’s Bench 1851) the Court ruled on the scope of the Utility Design Act. The design in issue was for a ‘ventilator’, that is a mechanism for opening the pane of a window (Figure 3.10). As can be seen, the drawings indicate the overall operation of the system for opening the window and focus in detail on the form of the screw. Apart from describing how the various components (pane, frame, screw and pulley) interacted, the textual component specified that ‘[t]he part or parts of this Design which are not new or original are all the parts and apart from the purposes thereof What is Claimed as new is the general configuration and combination of parts marked A, B, b, D, c, e, a, c exclusively of Figs 5.6. and which are subsidiary or illustrative’…). Quashing the conviction, the court held that Dixon’s design was not within the statute because in the description it specified the design as being a combination of features to produce a result and thus was not dependent on the specific shape or configuration of those features. Indeed, the Court observed that the same effect could be produced using different shapes and that had Dixon’s protection been limited to the shape then Bessell, who used a different shape of screw, would not have infringed. The potential importance of the holding was apparent to patent agent Frederick Campin who suggested that it placed ‘some hundreds’ of registrations ‘at the mercy of the pirate’.Footnote ¹⁵⁵

Figure 3.10 ‘Improved window ventilator’ registered by William Dixon on January 26, 1849, and litigated in Dixon v Bessell (October 1, 1850, Guildhall Police Court): BT 45/9/1750

The only case in which the alternative route to the magistrates,Footnote ¹⁵⁶ that of using the superior courts, was taken was Margetson v Wright, which concerned the design for a ‘Protector label’ with a metal eyelet that prevented the label being ripped off (Figure 3.11). The defendant had registered its own version, the ‘Direction label’ (Figure 3.12). The complainant succeeded in summary proceedings and was awarded 20 shillings.Footnote ¹⁵⁷ Nonetheless this did not prevent the defendant from continuing to make and sell its label. Margetson therefore issued a bill for an injunction. When the Vice-Chancellor (Knight-Bruce) refused to grant injunctive relief,Footnote ¹⁵⁸ Margetson sought to establish his rights at law. Unfortunately, in proceedings before Denman LCJ, sitting with a common jury out of term, the defendant was able to prove the availability of the design before the date of registration.Footnote ¹⁵⁹ The authority thus gave no guidance on the interpretation of the Utility Design Act.

Figure 3.11 ‘Protector label’ registered by Margetson on January 9, 1847, and litigated against Wright in the Guildhall Police Court on June 3, 1848: BT 45/5/917

Figure 3.12 ‘Direction Label’ registered by George Wright on November 17, 1847, and said by Margetson to infringe his registration in the Guildhall Police Court on June 3, 1848, as well as subsequent proceedings in Chancery and common law: BT 45/7/1261

Two other cases concerning Utility Design Act registrations were brought in the common law courts for money owing under licensing arrangements and tried at nisi prius: Millingen v Picken and Rogers and Beedle v Driver. In both cases, the defendant sought to justify non-payment of licensing money ostensibly owed under the contracts by asserting that the registration was invalid. The more complicated of the two cases, Millingen, related to a parasol which could be opened using a single hand. The defendant had entered an agreement to make and sell the parasol. However, the defendant considered the design to fall within scope of an earlier patent for ‘Constructing umbrellas and parasols’ owned by Joseph Barker and wrote to parasol manufacturers, under Barker’s name, asserting this.Footnote ¹⁶⁰ The agreement between Millingen and Picken contained a penalty clause, for £100, should Picken do anything to prejudice Millingen’s right and title. The plaintiff brought proceedings claiming that it was entitled to the sum. Millingen won at trial, but before the Court of Common Pleas en banc, Serjeant Byles argued that:

Tindal LCJ initially awarded the rule nisi, but on June 3, 1845, the Court en banc affirmed the verdict stating that the defendant was not free to defend the action by claiming the plaintiff was not entitled to the registration. The case, therefore, ultimately provided no clarification as to the scope of the Utility Design Act.

In Rogers and Beedle v Driver, Beedle had invented a shape of brick, twice the size of a normal brick but with a cylinder cut out so that when laid against a corresponding brick the combination created a channel that would allow the passage of air (Figure 3.13).Footnote ¹⁶¹ Calling the design the ‘universal ventilating brick’, Beedle had entered into a partnership with Rogers to exploit it. They licensed Driver to make the bricks for the Southampton area, Driver in return promising a fee of £100 plus a 7 per cent royalty on sales. When Driver failed to pay the full fee, Rogers and Beedle brought an action at Berkshire Assizes for the remainder. Driver sought to argue that the registration was invalid on various bases including that the subject matter was properly that of a patent, and thus not registered design. Patteson J said he could see no reason why the statutory right should not be available for matters that were also patentable,Footnote ¹⁶² and the full court of Queen’s Bench agreed. Without offering a conclusive view as to whether the brick was patentable, the judges were unanimous that there was no reason to think that the patentability of an article precluded its registration under the Utility Design Act.

Figure 3.13 ‘Ventilating brick’ registered by Edward Beedle on and litigated in the Berkshire Lent Assizes, 1850, in Rogers and Beedle v Driver: BT 45/10/1915

It is hard to assess the impact of the 1843 Act. Writing in 1851, Thomas Turner noted that ‘we have very little of an authoritative nature to guide us in deciding what proportion of the registered designs might have been or may be maintained’.Footnote ¹⁶³ One ‘eminent member of the bar’ had, by 1850, apparently expressed the opinion that ‘it is impossible to protect any machine, or portion of a machine, under [the Act]’ leading one commentator to suggest that only one in ten had been validly registered.Footnote ¹⁶⁴ Some thought the uncertainty merely an opportunity for ‘puffing and pretence’.Footnote ¹⁶⁵ Others offered more positive appraisals. Charles Barlow and Philip Le Capelain, patent agents, agents for registration and editors of the Patent Journal and Inventors Magazine argued that while the 1843 Act was ‘singularly obscure and indefinite’ nevertheless it ‘has worked well, and conferred incalculable advantages on inventors’.Footnote ¹⁶⁶ As we have seen, registrants succeeded in a reasonable proportion of cases and, magistrates frequently adhered to their own sense of justice. The Builder anticipated that in future reform proposals ‘Justice will be done to the Registration Act as an irregular improvement in, or rather substitute for, the law as it stands – as a “small patent law” in short, as the public have not been slow in making it.’Footnote ¹⁶⁷

According to the Society of Arts, the Act had a very positive effect on the morality of ‘inventors’. Although offering no empirical evidence, the Society of Arts was convinced that manufacturers respected the registrations, irrespective of their validity.Footnote ¹⁶⁸ Clement Johnson, the successor to F. B. Long as the Registrar of Designs, claimed that ‘on the whole the Act has worked to the satisfaction of inventors and the public in general.’Footnote ¹⁶⁹ In particular,

3.4 The Demise of the Utility Design Act

While the parameters of the subject matter of the Utility Design Act and its relationship to patentable subject matter remained undefined, after 1852 the level of concern with the overlap between the two regimes waned rapidly. This was because of the reform of patent administration which simplified the patent system, united the three patents of England and Wales, Scotland and Ireland into one, and established a central patent office. Most importantly, reductions in the cost of a patent to £25 for three years enabled the patent system to compete with a £10 Utility Design Act registration.Footnote ¹⁷¹ Although some had suggested that if the patent system was reformed that the Utility Design Act should be abolished,Footnote ¹⁷² others suggested that it should be left to die a natural death,Footnote ¹⁷³ which was what happened. Following the patent reforms, utility design registrations fell to about 100 per year after 1860 (a number maintained until 1883), while patent registrations increased exponentially after 1852 (prompting further reflection on the desirability of making patents even cheaper).

With fewer registrations, fewer cases were reported.Footnote ¹⁷⁴ With no significant developments in the jurisprudence on the Utility Design Act in the next three decades, the precise boundary and the degree of overlap remained uncertain. In 1872, giving evidence to a further Select Committee on Letters Patent, Bennett Woodcroft, the clerk to the Commissioners of Patents (established under the 1852 Act), observed that there were many patents that had been taken out that were ‘properly the subjects for the registration of designs’ and that ‘many inventions go to the Design Office, which belong to the Patent Office’.Footnote ¹⁷⁵ In line with this, treatises continued to warn of the dangers of assuming that protection under the Utility Design Act was in some way equivalent to that of a patent;Footnote ¹⁷⁶ nonetheless, the practice continued.

In 1883, it was decided to merge the Ornamental and Utility Designs Acts into a single regime.Footnote ¹⁷⁷ The Memorandum which accompanied the Patents, Designs and Trade Marks Act 1883 acknowledged that prior to 1883 many matters that were patentable had been protected under the Utility Design Act.Footnote ¹⁷⁸ As Joseph Chamberlain, the President of the Board of Trade, told the House of Commons, the Utility Design Act

However, because the 1883 Act reduced the costs of patents to £4, the attraction of design registration (at £10) disappeared: ‘such useful designs as embrace a mechanical action would be treated as subject matter for a patent’.Footnote ¹⁸⁰

The implication from this was that the 1883 reform was not intended to change things substantively; the Registry would be simplified by removing the formal classification that relied on the distinction between shape, etc., which served the purpose ornament versus utility. As the barrister Edward Daniels observed, the distinction between the two forms of design ‘was abolished’.Footnote ¹⁸¹ Nothing in the move implied that if an applicant were to choose the now more expensive design protection over patenting, that utility of form would not remain a consideration in the assessment of the novelty of a design or its infringement.

Whatever the intention, the effect of the merger of the Ornamental and Utility Designs Acts did have important consequences. This is because, in practice, administrative changes and judicial interpretation ended the feasibility of using the design regime as a utility model scheme: it was not so much the ‘distinction’ between ornamental and utility designs that was abolished so much as the category of utility designs itself.

On the administrative side, presumably anticipating that such applications would no longer occur because of the cheapening of patents, the implementing apparatus for the registration of designs was altered so that it no longer provided for the application to include a title, let alone ‘such description in writing as was thought necessary to render the same intelligible’.Footnote ¹⁸² As Edmunds explained, ‘no elaborate explanation by the author of the design is required or allowed’.Footnote ¹⁸³ Moreover, while under the Utility Design Act, the drawings were to be ‘on a proper geometric scale’,Footnote ¹⁸⁴ the drawings required under the 1883 Act only needed to enable the registry to ‘identify the design’.Footnote ¹⁸⁵ While the 1883 Act still required a statement as to the ‘nature of the design’,Footnote ¹⁸⁶ rule 9 of the Design Rules 1883 interpreted this as merely an indication of whether the design related to ‘pattern’, ‘shape’, or ‘configuration’ and an indication as to the method by which the design was to be applied to the article. Importantly, too, the 1883 Act conferred on the comptroller the power ‘if he thinks fit, to refuse to register any design presented to him for registration’.Footnote ¹⁸⁷ Thereafter, the Office could reject applications that it thought inappropriate, for example because the application appeared to relate to mechanical actions or principles. Finally, under the 1883 Act, all designs were secret – so that if useful designs had remained protected a person could incur penalties even though they could not have known of the registered design.Footnote ¹⁸⁸

In effect, the post-1883 design regime was no longer structured to function as a utility model. This is vividly illustrated by comparing the registrations under the 1843 Act with a registration under the 1883 regime.

On November 10, 1884, Walker, Hunter & Co registered a design for a fire door (Figure 3.14).Footnote ¹⁸⁹ As is evident, the representation used under the 1883 Act had no text (whereas those used under the 1843 Act had plenty of text). Elsewhere in the register book, under ‘Statement of Design’ Walker, Hunter & Co wrote ‘range fire door with moulding on to fit. Moulding forming front of range. Shape to be registered’.Footnote ¹⁹⁰ There was nothing to indicate the function of the moulding beyond the words ‘to fit’. (The entry in the newly published Official Journal of the Patent Office was even less informative, referring just to the registration number, proprietor, date of registration and class).Footnote ¹⁹¹ As we will see, this change in form had implications for the judicial interpretation of the scope of protection afforded by a representation.

Figure 3.14 Walker, Hunter, & Co’s registration under the Patents, Designs and Trade Marks Act 1883, dated November 10, 1884, litigated in Walker, Hunter, & Co v Hecla Foundry (1889 House of Lords): BT 50/21/16596

The administrative changes fed into judicial interpretation of the scope of eligible subject matter under the Patents, Designs and Trade Marks Act 1883. With the exception of one or two first-instance decisions,Footnote ¹⁹² the courts began to develop case law that limited the potential to protect the function or functional components of an article through design registration. The first judicial move in this direction was to declare that the purpose of any particular shape was irrelevant and that novelty and infringement were to be assessed simply by ‘the eye’. The second was to re-evaluate the relationship between design and patents and bit by bit to embrace the principle that anything that could be patented was ipso facto not protectable as a design.

The first move was taken by the House of Lords in its 1889 decision in Walker, Hunter, & Co v Hecla Foundry (1889 House of Lords). In this case the claimants registered a design for a fire door for a kitchen range, with the representation as set out at Figure 3.14. The key characteristic of the door was the moulding on the door, which the registrant claimed operated to exclude cold air from the range (a function that would not have been obvious to a non-expert from looking at the representation). As already noted, the text accompanying the registration indicated that protection was for ‘the shape’ of the door but said nothing about function. While the court below had treated the purpose of the moulding as being relevant to determine whether the defendant’s fire door infringed (so that any suitable moulding would infringe), the House of Lords indicated that this was not the correct approach. Instead, they said that the purpose of the shape was an irrelevant consideration: all that mattered was the similarity of shape viewed by the eye. As Lord Herschell stated, ‘I do not think the object which the designer has in view in adapting the particular shape, or the useful purpose which the shape is intended to serve, or does serve, ought to be regarded in considering what is the design protected’.Footnote ¹⁹³

In many ways, this reasoning was the inevitable consequence of the changes in the administrative rules which precluded the possibility of claim-like descriptions that had been commonly used under the Utility Design Act. In the absence of such statements, courts would either have had to identify the purpose of a design from circumstantial matters, or treated the purpose of the shape as being irrelevant to its legal evaluation. The House of Lords chose the latter approach. The ruling meant that the 1883 Act had been more than a mere formal merger of two classes of ornamental and utility designs into one (as Chamberlain had put it). The removal of the textual aspect of the representation had deprived the courts of a key feature that had facilitated the identification/interpretation of designs.

By leaving the appraisal of any registration or alleged infringement to the ‘eye’ alone,Footnote ¹⁹⁴ the merger effected in 1883 assimilated the scopic regime of representation/interpretation to that of the Ornamental Design Act. In Hecla Foundry, Lord Watson declared that the decision of the House of Lords in Holdwsorth v McRea (1867 House of Lords), a case decided under the Ornamental Design Act, was equally applicable to the 1883 Act. In this case, the issue was whether depositing a specimen of a fabric pattern had been satisfactory for the purposes of section 5 of the 1858 Act. All members of the House of Lords held that the registrant had complied with the Act and as a result that the design protected was for the entire combination of features in the sample. Lord Westbury elaborated further: ‘the appeal is to the eye, and the eye alone is the judge of the identity of the two things. Whether, therefore, there be piracy or not is referred at once to an unerring judge, namely, the eye, which takes the one figure and the other figure, and ascertains whether they are or are not the same’.

As there was nothing ‘below the surface’, it was assumed that no explanation was required as to the meaning and purpose of ornament. Lord Westbury’s test was premised on the belief that vision was universal and self-explanatory, requiring neither education nor expertise.Footnote ¹⁹⁵ In this context, it was the judge who determined similarity by comparing features side by side. As David Fulton explained, ‘the Court will not look beneath the surface, but must find the reasons for registration apparent to the eye’.Footnote ¹⁹⁶ The indirect effect was to exclude many functional features from consideration at all because they would go unnoticed to the ‘universal’ as opposed to the trained or informed ‘eye’. As Baron Pollock indicated in Moody v Tree (High Court 1892), small changes to shape or configuration which achieved functional effects could be disregarded if they were not ‘pleasing to the eye’.

The second move was to frame the concept of design within the broader context of other industrial property rights (a concept recognised internationally in the Paris Convention of 1883 and implicitly in domestic legislation enacted that same year). More specifically, judges started to define design protection by reference to patent protection, giving the latter some sort of historical precedential and normatively superior status. In this characterisation, patent protection was recognised as historically and normatively prior while design law was seen as a legislative supplement. As a result, whatever the purpose of design law may have been, it could not have been intended to overlap with the subject matter of patents. If subject matter were patentable, it ipso facto should not be regarded as falling within the field of design protection. This mode of thinking tallies with what we have referred to elsewhere as the ‘denigration of design’.Footnote ¹⁹⁷

This form of reasoning can be seen most clearly in Moody v Tree. The case, which concerned a registered design for a basket (Figure 3.15), had initially been heard at Kent County Court, where a jury ruled the claimant’s design to be novel. The Court allowed the defendant to apply to the Divisional Court for a ruling on whether, even though new, the registration related to a design, and the superior court concluded it did not. Below the representation of the basket the applicant had indicated that the pattern involved the osiers being worked in singly and all the butt ends being outside.Footnote ¹⁹⁸ The Divisional Court concluded that this described a mode of construction, not a design. Baron Pollock (a survivor from the pre-Judicature Court of Exchequer, though now in the High Court) initially expressed some discomfort in dealing with design protection ‘in consequence of the novelty of this Act of Parliament, which in one sense is founded on patent law, but in another sense is entirely distinguishable from patent law’.Footnote ¹⁹⁹ However, having satisfied himself that ‘the Act with which we are dealing now is founded upon a different basis to the Patent Act’, Baron Pollock reasoned that ‘the Designs Act was intended to add to the Patent Act by making that which was not patentable – the subject of a design’. In contrast to previous authorities that had foreseen the possibility of overlap, Pollock utilised the historical priority of patent law to interpret the concept of design as necessarily excluding material that was patentable. Concurring, Vaughan Williams J. argued that ‘it was not the intention of the Act of Parliament that processes which could not, either for want of novelty, or want of utility, or some other reason, be protected as patent rights should be protected by reason of … the provisions contained in this Statute with reference to designs’.Footnote ²⁰⁰

Figure 3.15 Thomas Isaac Moody’s registration of a design for a basket, dated June 17, 1891, and litigated in Moody v Tree (High Court 1892): BT 51/64

These judicial manoeuvrings reinforced the perception that the protection of ‘useful designs’ had been abolished in 1883. In 1930, looking back, the Chair of the Sargant Committee observed that ‘in 1883 registration of such [utility] designs was abolished, and that since that date registration had been possible only in respect of ornamentation’.Footnote ²⁰¹ In turn, these judicial manoeuvrings also prepared the ground for statutory amendment of the definition of ‘design’. Following a report of the Board of Trade in 1916,Footnote ²⁰² judicial limitations were statutorily confirmed by the introduction of an exclusion from the registered design system of ‘any mode or principle of construction or anything which is in substance a mere mechanical device’.Footnote ²⁰³ With these exclusions, the utility design regime was finally brought to an end.

3.5 Forgetting the Utility Designs Act 1843

Almost immediately after the final vestige of the 1843 Act was removed from British law in 1919, there were calls for the introduction of some kind of short-term, cheap and speedy protection for minor innovations in the United Kingdom. The first came in 1928 in the form of a report by the British Science Guild,Footnote ²⁰⁴ a pressure group made up of scientists keen to have scientific insight incorporated into public policy.Footnote ²⁰⁵ Entitled, Reform of British Patent System, the committee led by the electrical engineer, William Eccles, proposed the introduction of a ‘short term patent’ for new and useful variations of known constructional forms and arrangements and compositions characterised by new ingredients, but not for processes.Footnote ²⁰⁶ The proposal was rejected by a governmental committee established by the Board of Trade,Footnote ²⁰⁷ though it regarded the question as ‘one of the most important and most controversial subjects’ that it had to consider.Footnote ²⁰⁸ The question was raised again in the early 1960s in another departmental inquiry on industrial design (the Johnston Committee), which indicated that though the question was a ‘live one’ it was outside the Committee’s terms of reference. The idea was rejected again in the Banks report in 1971. Despite what might have been regarded as a conclusive rejection, just over a decade later a Green Paper issued by a committee headed by the then Chief Scientific Officer to the Cabinet Office recommended adoption of a regime of ‘registered inventions’.Footnote ²⁰⁹ The recommendation did not, however, make it onto the statute book.Footnote ²¹⁰

Despite the persistent interest in some sort of utility model through the twentieth century, none of the various proposals or reports built upon the Utility Designs Act 1843.Footnote ²¹¹ Instead, the German gebrauchsmuster was consistently used as the legal model for the proposed new rights.Footnote ²¹² The gebrauchsmuster, introduced in 1891 to fill the ‘gap’ perceived to exist between registered designs (which were limited to aesthetic appearance) and the high level of inventiveness necessary to merit patents,Footnote ²¹³ protected ‘working appliances or articles of utility, or parts of the same in so far as they serve the object of the work or use through a new shape or arrangement’. Even though the gebrauchsmuster was itself very likely inspired by the British precursor,Footnote ²¹⁴ it was the German version that had become the key reference point in the United Kingdom.

Why was the Utility Designs Act so quickly forgotten? One potential reason for this is strategic: whether one supported or opposed proposals for a second tier of protection, the 1843 Act probably offered little to buttress one’s case. For supporters, the experience of the 1843 Act could hardly have been presented as a huge success. While the German gebrauchsmuster proved to be as popular as patents in terms of registrations,Footnote ²¹⁵ after 1852 there were rarely more than 100 utility designs registered each year in the United Kingdom. Moreover, the fact that the gebrauchsmuster was a feature of the law of an important foreign trade rival had rhetorical force: the fact that the gebrauchsmuster benefited and supported German innovators was a strong argument for its adoption in the United Kingdom.Footnote ²¹⁶ For opponents of the adoption of a utility model in UK law, the experience of the 1843 Act might have enabled them to argue ‘we tried it, and it was a failure’. However, as we have seen, it would have been difficult to assert that it had clearly been a resounding failure.Footnote ²¹⁷ For those aware of the history, it might have been better to ignore the British experience and instead emphasise that the German gebrauchsmuster was linked to distinct features of German law and procedure – for example the high standard of patent examination – which made its adoption in the United Kingdom unnecessary or problematic. (Interestingly, perhaps, nothing was said at this point about divergent approaches to the drafting of claims and their interpretation.) This would also have allowed more xenophobic opponents to characterise the utility model not only as unnecessary or undesirable, but also as intrinsically foreign.

While strategic decisions to remember history selectively and to ignore inconvenient aspects from the past help to explain the absence of references to the 1843 Act, the collective amnesia is more likely as much a consequence of prevalent ways of thinking about intellectual property law. As we described in The Making of Modern Intellectual Property Law, by the end of the nineteenth century a particular way of thinking about ‘intellectual property law’ had fallen into place, according to which the field was divided into particular branches – patents, copyright, designs and trademarks – each with its own self-image and logic.Footnote ²¹⁸ By the last decades of the nineteenth century each branch had its own treatises, many of which remain today – volumes by Copinger and Scrutton on copyright; Terrell, Edmunds, and Frost on Patents; Edmunds on designs. The distinctness of these categories was further cemented through the twentieth century, for example by way of international and regional arrangements for registration. In this categorisation, the history of the Utility Designs Act was included in the category of history of design law (even if only as a historical aberration),Footnote ²¹⁹ whereas proposals for utility models and short-term patents were conceptualised within the field of patent law. As a result, the 1843 Act was simply not part of the ‘memory’ of British patent law.Footnote ²²⁰

The dominance of such a way of thinking about the shape and nature of the law is evident in many of the twentieth century documents that considered introducing a utility model law into the United Kingdom. For example, in arguing for the adoption of a British gebrauchsmuster the British Science Guild said that ‘the new body of law that must be created should preferably conform to the model of patent law rather than of design law’.Footnote ²²¹ The Sargant Committee’s response, rejecting the proposal, argued that the entire idea of a ‘useful design’ was confusing, if not self-contradictory, because the very word ‘design’ implied in law the protection of appearance rather than utility.Footnote ²²² The Committee went on to suggest that the confusion arose because ‘patents’ and ‘designs’ were placed within the same legislation – a curious comment given that the Committee was itself charged with reviewing the law of patents and designs but one entirely consistent with the idea that the different branches of ‘intellectual property’ comprise distinct regimes with their own ontologies, epistemologies, teleologies and histories.Footnote ²²³ When the Johnston Committee was asked by various parties in 1961 to consider recommending the introduction of a ‘utility model’,Footnote ²²⁴ it regarded the matter as falling beyond its terms of reference:Footnote ²²⁵ presumably conceiving the issue to be one for the ‘more important’ branch of patent law rather than design law.Footnote ²²⁶ The Committee’s historical review of legislation had mentioned the protection of ‘useful designs’ under the 1843 Act,Footnote ²²⁷ but clearly did not think this sufficient to consider utility models as falling within ‘law relating to protection of industrial designs’.Footnote ²²⁸ Perhaps least surprisingly, the Banks Committee, with its focus on patent law treated the proposal as a ‘petty patent’ entirely within the normative (and implicitly historical) framework of patent law.Footnote ²²⁹ Even though the Nicholson Committee came to a very different conclusion from Banks, the framing was the same, even if the language ‘two-tier patents’ and ‘registered inventions’ was slightly distinct.Footnote ²³⁰ It seems likely that the dominance of the modern framework for intellectual property thinking, coupled with the characterisation of gebrauchsmuster/utility models/petty patents as properly belonging within patents, goes a long way to explaining why most commentators and policy-makers have failed to draw a connection between these various proposals for reform and the forgotten Utility Designs Act of 1843.