A recent English case illustrates important principles concerning the scope of protection available for registered industrial designs.
Dyson Ltd. was the first manufacturer to introduce two-stage cyclone dust-separation technology for vacuum cleaners as an alternative to the use of porous bags. Initially an upright cleaner was introduced to the marketplace and then a cylinder cleaner. The design of the cylinder cleaner vacuum is regarded as a classic design. It has received numerous accolades and awards as a result of its novel and striking appearance. It has also been exhibited in a number of museums.
An industrial design registration was obtained relating to the cylinder cleaner. The registration provides that the features of the design for which novelty was claimed reside in the shape and the configuration applied to the article as shown in the application. A representative photograph of the side view of the vacuum is reproduced below:
Figure 1: Side view of Dyson Ltd. cylinder cleaner
The defendant launched a multi-stage cyclone vacuum cleaner.
A design means features of shape configuration, pattern or ornament applied to an article by any industrial process being features which in the finished article appeal to and are judged by the eye.
Under the legislation in the United Kingdom, the owner of a registered design has the exclusive right to make articles incorporating that design for a fixed period of time. The scope of protection conferred by a design includes any design which does not produce on the informed user a different overall impression. In assessing the scope of protection, the degree of freedom of the designer in developing the design is taken into consideration.
The Informed User
The Trial Judge referred to the concept of an informed user as implying that the person concerned uses the product to which the design has been applied. The use of the word “informed” suggests that without being a designer or technical expert, the user knows the various designs which exist in the relevant sector of the marketplace and possesses some knowledge with regard to the features of the designs and as a result of the potential interest in the products shows a relatively high degree of attention when the products are used. In this case, it was found that the informed user was a knowledgeable user of domestic vacuum cleaners.
The Judge considered that an informed user would regard the plaintiff’s vacuum as a cylinder vacuum cleaner. The design was strikingly different from any pre-existing designs.
Degree of Design Freedom
The concept of design freedom relates to the extent of pre-existing designs. If a large departure can be made from prior designs this suggests significant design freedom. The more the designer’s freedom in developing a design is restricted, the more likely minor differences between the designs in issue will be sufficient to produce a different overall impression on the informed user.
The Judge did not accept that there were any significant constraints on design freedom. As a result, the plaintiff’s design was entitled to a fairly broad scope of protection because of the differences between it and pre-existing designs and because of the degree of freedom available to the designer.
The Overall Impression
The Judge observed that while it is proper to consider both similarities and differences between the respective designs, what matters is the overall impression produced on the informed user by each design having regard to pre-existing designs and the degree of freedom of the designer.
While considerable attention was directed to the specific elements making up the designs, the Judge concluded that standing back from the details and considering the overall impression created by the respective designs, the informed user would not consider the similarities as being significant and would notice the differences between the respective designs. The overall impression produced by the registered design was a vacuum that was smooth, curving and elegant. The overall impression produced by the defendant’s design was a rugged, angular industrial vacuum. As a result, the action was dismissed.
While the Canadian Industrial Design Act does not use exactly the same words in dealing with infringement of industrial designs, all of the same concepts described above can applied in a specific case.
Obtaining registration under the Act can be an important element in protecting product shape and appearance, but the protection available only goes so far.