In a recent case1 the High Court dismissed a claim by Dyson Limited for registered design infringement against Vax Limited in relation to the import and sale of Vax’s Mach Zen vacuum cleaner, despite the incorporation into the Vax machine of signifi cant elements of the Dyson design.
The claimant, Dyson, is renowned as an innovator of electrical goods, particularly cyclonic vacuum cleaners, which it has marketed since 1993. Dyson manufactures both upright dual cyclone vacuum cleaners (referred to as its DC01 design) and more compact, cylinder dual cyclone vacuum cleaners (the DC02 design). Vax is a well-known competitor of Dyson in the vacuum cleaner market.
Dyson obtained a registered design for the DC02 vacuum cleaner in 1994. The registration included the following statement of novelty: “The features of the design for which novelty is claimed reside in the shape and confi guration applied to the article as shown in the representations.”
In late 2009, Vax launched the Mach Zen, a multi-stage compact cyclone vacuum cleaner. Dyson issued proceedings against Vax for infringement of the DC02 registered design by the import and sale of the Mach Zen.
As required by the EU Designs Directive (98/71/EC), Justice Arnold fi rst assessed whether Dyson’s DC02 design had individual character. The test is whether the overall impression, as produced on an informed user viewing the design, clearly differs from that produced on him or her by the existing design corpus. In assessing this, the judge considered the nature of the product to which the design was applied or incorporated and the industrial sector to which it belonged. The degree of freedom that the designer enjoyed in developing the design was also a key factor.
The judge decided that the informed user was most likely to be a knowledgeable user of vacuum cleaners, rather than a vacuum cleaner salesman.
Dyson contended that the existing design corpus was for cylinder vacuum cleaners. Vax argued that it should refer to cyclonic cylinder vacuum cleaners - a surprising argument, as this appeared to give Dyson’s registered design a broader scope of protection. The judge held that the relevant design corpus was that of cylinder vacuum cleaners available in 1994.
The judge agreed with Dyson that the DC02 registered design was strikingly different from the design corpus at that time. The model represented a signifi cant departure from the prior design corpus. This indicated a high degree of design freedom and meant that Dyson’s registered design should receive a broader scope of protection than if the designer had been constrained in his design.
Dyson’s DC02 design was therefore held to have individual character.
Different overall impression
The judge considered the features of the Dyson DC02 design against Vax’s Mach Zen to assess whether Vax’s product was infringing. Much consideration was given to the transparent collecting bin, which was a feature of both vacuum cleaners. Vax claimed that the bin was excluded from the registered design by the statement of novelty, the effect of which was to exclude anything other than the scope or confi guration of the product. However, the judge noted that case law had clearly established that statements of novelty are merely explanatory and are not to be construed as restricting the scope of the registered design. The collecting bin was a feature of the design and contributed to the visual appeal of the product.
Vax also argued that the bin was dictated solely by function and was not protectable under the registered design. The judge stated that objectivity was needed in assessing whether a feature has been chosen exclusively for function rather than for the purpose of enhancing the product’s visual appearance. It was not necessary to ascertain the designer’s intentions when the design was being developed. The judge held that the transparency of the collecting bin was not dictated solely by function and fell within the scope of protection.
However, despite fi nding for Dyson on these aspects, the judge dismissed Dyson’s claim. He considered the similarities and differences between the two products in detail. He held that although the informed user would notice similarities between the two designs (ie, the transparent bin, the large rear wheels and the curved longitudinal central handle), he would not consider these to be signifi cant. Furthermore, there were several signifi cant differences between the two products that the informed user would notice. The judge summarised the point by stating that:
“the overall impression produced by [Dyson’s DC02 design] is smooth, curving and elegant. The overall impression produced by [Vax’s] Mach Zen is rugged, angular and industrial, even somewhat brutal.”
The two designs therefore presented different overall impressions to the informed user.
Even considering the wide scope of protection given to Dyson’s registered design, Vax’s product did not constitute infringement.
Dyson is unlikely to accept this decision, given its track record for protecting its IP rights in innovative products against competitors.
In general, judgments on registered design right infringement are likely to be open to appeal. Deciding on general overall impression consists of an assessment of both products’ specifi c features; there will always be a degree of subjectivity in the decision. As Lord Justice Jacob noted in Proctor & Gamble v Reckitt Benckiser,2 the test is “inherently rather imprecise”.
The Court of Appeal’s approach in Proctor & Gamble suggests that an appeal may be unsuccessful. In that case it was noted that, among other things, the Air Wick air freshener design was “a common canister with a plastic cap stuck on top”, whereas the Febreze design had “a smooth and dynamic feel”. The court therefore held that despite the similarities, the products gave a different overall impression and there was no registered design infringement.
Following these two cases, manufacturers will be concerned that competitors can escape infringement of elegant designs simply by making them more industrial looking.
Justice Lewison, who heard Proctor & Gamble in the High Court, expressed similar concerns. However, Jacob LJ disagreed, stating: “I am not so concerned. We are here considering monopolies in designs, not trademarks. A ‘poor quality’ imitation, if it does not convey the same impression as the ‘original’, will fail on its own design merits - or rather the lack of them.”
Companies such as Dyson would probably disagree. A more industrial-looking imitation can still divert business from the original, particularly if it is less expensive, given the current economic climate.
The registered design in this case relied on photographs for its specifi cation, as opposed to the line drawings relied upon in Proctor & Gamble. Given that photographs are likely to show more detail than line drawings, it is reasonable to assume that less detailed line drawings may give a wider scope of protection.
However, the cases suggest that there is little benefi t in choosing one over the other, and reinforces the feeling that only close reproductions will be held to be infringements in future.
In both Proctor & Gamble and Dyson the registered design was for the look of the whole article. It seems clear from the approach of the UK courts in these two cases that protection is limited to closely similar designs. A way to deal with this problem in future is for proprietors to register signifi cant details of their designs (eg, the cyclone and collector bin arrangement and the large rear wheels) as separate designs.
Arguably the most signifi cant point is that in a number of places, when considering the signifi cance of the similarities on which Dyson relied, the judge referred to the freedom of the designer of the Vax machine. This is surely not what is intended by Article 9 of the directive. Article 9 focuses on the “scope of protection of the design”, and it is in judging that scope that the freedom of the designer is taken into account.
The ‘designer’ in this context means the designer of the registered design. Article 9 must mean that the scope of protection is reduced if the designer had little option but to make a design look as it did. It is not an invitation to the court to identify the design restrictions acting on the designer of the putative infringement.