Interlego AG v Tyco Industries Inc & Ors (Hong Kong)

Factual and Procedural Background

The Appellant, “Company A,” manufactures the well-known interlocking children’s construction bricks sold worldwide under a famous brand. The Respondents (“Company B” and its affiliates) decided to enter the same market. Because Company A’s patents and registered designs had expired, Company B duplicated the dimensions of Company A’s bricks through reverse-engineering so that its products would interlock with Company A’s.

Company A sued in the High Court of The Territory alleging infringement of copyright in its engineering drawings (not the bricks themselves). The trial judge granted Company A extensive injunctive relief. On appeal, the Court of Appeal set aside the injunction insofar as it related to drawings made before 1 January 1973 but upheld it for drawings produced thereafter. Both sides then appealed to the Judicial Committee of the Privy Council.

Legal Issues Presented

1. Whether Company A’s pre-1973 drawings were “designs capable of registration” under the Registered Designs Act 1949 and therefore excluded from copyright protection by paragraph 8(2) of the Seventh Schedule to the Copyright Act 1956.
2. Whether the post-1972 drawings, which largely copied earlier drawings with minor technical amendments, qualified as original artistic works entitled to a fresh term of copyright.
3. If the post-1972 drawings were protected, whether Company B’s bricks reproduced a “substantial part” of those drawings or fell within the defence in section 9(8) of the Copyright Act 1956 (objects that would not appear to non-experts to be reproductions).
4. Whether Company A was estopped (“public estoppel”) from denying that its earlier registered designs were registrable.

Arguments of the Parties

Appellant’s Arguments

• Pre-1973 drawings were not “designs” because every feature was dictated by function; if they were designs, they lacked novelty and thus were not “capable of registration,” so copyright persisted.
• Post-1972 drawings embodied fresh skill and labour (altered tolerances, radii, wall thicknesses, etc.) and therefore satisfied the originality threshold.
• Company B copied those drawings when it reverse-engineered the bricks, thereby infringing copyright.

Respondents’ Arguments

• The pre-1973 drawings fell squarely within paragraph 8(2) and lost copyright on 1 January 1973.
• The post-1972 drawings were mere tracings of earlier drawings with only numerical amendments; copying, however skilful, cannot create originality.
• Any similarities between their bricks and Company A’s drawings were either insubstantial or, in two specific products, outside the perception of a non-expert under section 9(8).
• Company A, having enjoyed registered-design protection, was estopped from arguing the registrations were invalid.

Table of Precedents Cited

Court's Reasoning and Analysis

Pre-1973 drawings. The Board held that paragraph 8(2) of the Seventh Schedule excludes from copyright any artistic work that, when made, was a “design capable of registration” and intended for industrial application. Applying a purposive construction and rejecting the obiter in Stephenson Blake, the Board ruled that “capable of registration” refers to possessing the characteristics of a design, not to the presence of novelty. Company A’s pre-1973 drawings possessed eye-appeal and included non-functional features (e.g., brick outline, proportion, knob shape), so they were “designs” even though earlier designs existed. Consequently, copyright in those drawings expired on 1 January 1973.

Post-1972 drawings. Most later drawings were admitted copies of earlier ones onto which updated tolerances, radii, or technical notes were simply written. The Board reiterated that originality concerns visual expression, not the underlying technical information. Labour and skill in tracing or in deciding new tolerances does not make the traced image an original artistic work unless the visual content is materially altered. Since visual changes were minute (e.g., sharpening tube edges by 0.1 mm) and conveyed mainly through figures rather than pictorial alterations, the drawings were not original; therefore they attracted no new copyright.

Section 9(8) defence. For two items—a base-plate and a wheel—the Board agreed with the courts below that even a non-expert would perceive Company B’s products as reproductions of Company A’s drawings; hence the statutory defence failed. For all remaining items, because no copyright subsisted, infringement did not arise.

Holding and Implications

Holding: The Board dismissed the Appellant’s appeal and allowed the Respondents’ cross-appeal on all but two minor items, in respect of which the injunctions were maintained. Costs in all courts were awarded to the Respondents.

Implications: The decision clarifies that:

• Once an industrial drawing qualifies as a “design” and was intended for mass production, copyright will not survive the statutory cut-off date, regardless of novelty.
• Mere technical amendments or re-tracings of expired drawings do not generate fresh artistic copyright unless the visual expression itself is materially and originally changed.
• Manufacturers cannot secure perpetual monopolies by repetitive redrawing of engineering plans; conversely, competitors may lawfully copy expired designs provided they respect any visually original later works.