[2010] EWHC 1923 (Pat), a Patents Court for England and Wales decision of Mr Justice Arnold last Friday, 29 July, is not yet available on
. It was however noted by a very useful LexisNexis
. It's another major piece of IP analysis in Mr Justice Arnold's tour of key areas of IP but, for a change, has not resulted in the reference of a batch of questions for preliminary ruling by the Court of Appeal of the European Union.
Right: now here's a dust-removal device that looks as if it's safe from Dyson's design registrationDyson originated the two-stage cyclone dust-separation technology for vacuum cleaners, this being an alternative to the use of porous bags. In December 1994 Dyson applied for a UK registered design under the old Registered Designs Act 1949. This design, for a 'vacuum cleaner', contained the following statement of novelty under rule 15(1) of the then-current Registered Designs Rules 1989, SI 1989/1105:
"The features of the design for which novelty is claimed reside in the shape and configuration applied to the article...".
This application pre-dated Design Directive 98/71, which provided:
"A design right shall not subsist in features of appearance of a product which are solely dictated by its technical function...".
The Directive was incorporated into domestic law by amending the 1949 Act via the Registered Designs Regulations 2001, SI 2001/3949. Provisions corresponding to those contained in the Directive were also found in the Community Design Regulation 6/2002.
After Vax, which imported and sold vacuum cleaners, launched a multi-stage cyclone vacuum cleaner in 2009, Dyson sued for registered design infringement. Said Dyson, Vax's product was similar to its registered design, which differed from the existing design corpus in various ways. In particular (i) its inclined bin was substantially halfway between horizontal and vertical; (ii) its bin was transparent, showing the cyclone shroud and (iii) its lower bin support formed from a sweeping, curved forward extension of the wheel arches. Vax said its product was different to the design, especially when looking at the rear of its machine, the hose connector position and the front wheels.
It was accepted by both sides that, according to the transitional provisions in the 2001 Regulations, infringement had to be determined by reference to the post-implementation Act; this Act in turn had to be construed as far as possible in conformity with the Directive. Accordingly, while it was proper to consider both similarities and differences between the respective machines, what mattered was the overall impression produced on the informed user by each design, having regard to the design corpus and the degree of freedom of the designer. The informed user was taken to be a knowledgeable user of domestic vacuum cleaners.
Before dealing with the substantive claim,numerous preliminary issues had to be dealt with. These included (i) the correct interpretation of Article 8(1) of the Regulation, and therefore Article 7(1) of the Directive; (ii) the degree of freedom of the designer; (iii) the date as at which the overall impressions were to be compared; (iv) proceeding on the basis that the statement of novelty was to be taken into account, despite the fact that there was no provisions for such a statement in the post-implementation 1949 Act, the effect of that statement in the instant case; and (v) whether, as the claimant contended, the relevant existing design corpus consisted of cylinder vacuum cleaners or whether, as the defendant contended, there was no existing design corpus at all in December 1994. It was common ground that: (i) the 1949 Act as amended by the 2001 Regulations had to be construed as far as possible in conformity with the Directive; (ii) that although it was proper to consider both similarities and differences between the respective machines, what mattered was the overall impression produced on the informed user by each design, having regard to the design corpus and the degree of freedom of the designer; and (iii) that the informed user was a knowledgeable user of domestic vacuum cleaners.
Arnold J dismissed Dyson's claim.
* The better interpretation of Article 8(1) of the Regulation (= Article 7(1) of the Directive) was that it denied protection to those features of a product's appearance that were chosen exclusively for the purpose of designing a product that performed its function, as opposed to features that were chosen, at least to some degree, for the purpose of enhancing the product's visual appearance. Those matters had to be assessed objectively: it was not necessary to determine what went on in the designer's mind when the design was being developed. The matter had to be assessed from the standpoint of a reasonable observer who looked at the design and asked himself whether anything other than purely functional considerations could have been relevant when a specific feature was chosen.
* Case law indicated that design freedom could be constrained by (i) the technical function of the product or an element of it; (ii) the need to incorporate features common to such products; and/or (iii) economic considerations.
* The designer's degree of freedom could be tested by reference to the existing design corpus, and evidence of design freedom could also come from designs produced after the date of the registered design. Production of a wide variety of designs after the registered design was evidence that the designer of the registered design had not been constrained to design the product in the way that he had.
* In general, the degree of freedom of the designer had to be judged by reference to the technical specification of the product he was designing, Thus a high technical specification was likely to impose greater technical constraints, leaving the designer a lesser degree of freedom, than a low technical specification.
* The existence of other IP rights was not a relevant consideration -- unless it was specifically proved that particular rights existed which imposed particular constraints on the freedom of the designer at the relevant time.
* Since the date as at which the overall impressions were to be compared was the date of the registered design, regard should be had to the existing design corpus as at that same date.
* In this case, the statement of novelty did not require the transparency of the bin, which was a feature of the design which contributed to its eye appeal, to be ignored, even if transparency was 'pattern' or 'ornament' rather than 'shape' or 'configuration'. The fact that it was common ground that the informed user would know that the article depicted in the representations was a cyclonic vacuum cleaner because the informed user would see the cyclone within the bin supported that conclusion.
* The existing design corpus case consisted of cylinder vacuum cleaners and, on the evidence, the registered design was strikingly different both in overall appearance and in numerous detailed aspects of the design to the existing corpus in December 1994.
* The transparent bin had not been chosen for purely functional reasons but had rather been chosen, at least to some degree, for the purpose of enhancing the cleaner's visual appearance.
* Considering the overall impressions of the respective designs from the perspective of the informed user, rather than their details, in the light of the existing design corpus and the degree of freedom of the designer, the informed user would notice that there were certain similarities between the two designs, including, for example, the inclined transparent bin, but would not consider those similarities to be particularly significant. He would also notice many differences between them including, for example, the rear view, and would consider a number of those differences to be significant. The overall impression produced by the registered design was smooth, curving and elegant, while that of Vax's product was rugged, angular and industrial, even somewhat brutal. Even on the basis that the registered design was entitled to a fairly broad scope of protection because of the differences between it and the existing design corpus and because of the degree of freedom of the designer, the overall impressions produced by the two designs were different.
The writer of this post finds it difficult to tell vacuum cleaners apart, regardless of their shape, size, colour or functionality, the only thing that distinguishes one from another is the degree of disturbance it inflicts upon him when well-meaning persons try to vacuum round him while he is composing on the computer. However, he feels uncomfortable at the degree of conceptualisation and over-intellectualisation that goes into ascertaining whether one household product, in whole or part, resembles another. He feels even more annoyed that there are so many versions of the Registered Designs Act 1949 floating around: if only the current one were given a different year, to enable him to tell it apart from the other similar or nearly identical versions of the Act that bear the same name.
For earlier Class 99 note ("Dyson set to clean up on registered design?") and probable illustrations, click
here.
If reading this complicated note gives you a headache, click
here.
Those readers of Class 99 who subscribe to the European Intellectual Property Review (EIPR) will be pleased to note that it contains a contribution from Class 99 team member, lawyer and scholar Henning Hartwig entitled "The General Court's First Decision on a Community Design's Validity--All's Well That Ends Well? Grupo Promer v OHIM and PepsiCo (T-9/07)". Otherwise known as the "metal rappers" case, this decision was analysed here on Class 99 by David Musker.
