This summer has seen two giants of the vacuuming world embroiled in separate court actions to defend IP rights in their products. Both Dyson and Numatic (maker of the well-known Henry vacuum cleaner) have taken competitors to court over alleged infringements.

Dyson sought to protect its DC02 cleaner by invoking its registered design rights. Numatic opted to raise an action for passing off to protect its iconic Henry cleaner. The difference of approaches – and outcomes – in these cases highlights the need for owners of IP rights to take a holistic approach to protecting their assets.

Dyson: registered design right

Dyson's action was based on the claim that its competitor's cleaner infringed the design right Dyson held over the DC02 cleaner. Such rights are protected by the Registered Designs Act 1949 (the "Act"), as amended by the Registered Design Regulation 2001. Under the Act, the owner of the design right has the exclusive right to use the design for a maximum of 25 years from the date on which the design is registered.

The competitor's cleaner was similar to Dyson's DC02. Despite this, the High Court found that the competitor's cleaner did not infringe Dyson's registered design right.

The judge considering Dyson's claim noted the DC02 was significantly different from other cleaners in the existing design field at the time. This indicates a high level of 'design freedom', which usually entails broader protection for a design. However, in this case the judge held that an informed user of vacuum cleaners would notice significant differences between the DC02 and the competitor's cleaner. As such, Dyson's claim failed and the competitor was allowed to import and sell their cleaner.

Henry: passing off

In this case, Numatic raised an action against a competitor who had taken particular care to ensure that their cleaner would not infringe any design rights, despite being directly based on Numatic's Henry cleaner. Faced with this threat and no design or other IP rights to rely on, Numatic's solicitors turned to the common law action of passing off.

For a successful action for passing off, the party seeking protection for their product must prove three things:

  1. their product has a distinct reputation;
  2. another product is being misrepresented as theirs, confusing consumers; and
  3. the misrepresentation is (or is likely to) cause them some loss.

It was clear that the instantly recognisable Henry cleaner had a distinct reputation. Numatic went to the effort of commissioning market research to show that consumers would confuse the competitor's cleaner with Henry. This, plus the judge's own consideration of the similarities between the competitor's cleaner and Henry, was sufficient to establish that there would be a misrepresentation which would confuse consumers. Lastly, the judge was satisfied the passing off was likely to cause losses for Numatic. Accordingly, Numatic's action for passing off was successful.

Comment

These two cases highlight the fact that owners of IP rights may have a variety of means open to them to protect their rights. Although the cases concern different vacuum cleaners, it is clear that the test faced by Numatic's lawyers (an average consumer) was less onerous than the test faced by Dyson's lawyers (an informed user of vacuum cleaners). When considering how best to tackle infringement, IP owners must be prepared to consider their options and think outside the box.