Hot on the heels of the recent decision of the Court of Justice of the European Union in PepsiCo Inc v Grupo Promer Mon Graphic SA (reported here), the Court of Appeal (CA) has delivered its judgment in Dyson Limited v Vax Limited [2011] EWCA Civ 1206, concerning UK Registered Designs. 

Background

Dyson claimed that Vax's Mach Zen C-91 MZ vacuum cleaner infringed its UK Registered Design for its DC02 model (photographs below).  In the High Court, Arnold J had held that there was no infringement as the overall impression produced on the informed user by the Registered Design was different to that produced by the Mach Zen.  Dyson appealed to the CA.  Sir Robin Jacob delivered the lead judgment, which provides helpful guidance on the principle of degree of design freedom.

Representations of the Registered Design

Photographs of the Mach Zen

Key Issue

The key issue was, the CA said, straightforward.  It was whether or not the Mach Zen produced on the informed user a different overall impression to Dyson's DC02. 

Evidence

The CA was of the opinion that elaborate evidence was unnecessary.  What really mattered was what the court could see with its own eyes.  The most important things in a case about registered designs were: (i) the registered design; (ii) the accused object; and (iii) the prior art.  The most important thing about each of these was what they looked like.

Where expert evidence was allowed, the expert should be told what question(s) he was to address and should confine himself to those.  Expert evidence could be relevant to the degree of freedom of the designer in developing his design which, by Article 9(2) of the Designs Directive 98/71, must form part of the assessment of the scope of protection.  This could take two forms: (i) technical (typically why a thing or part of a thing must be shaped at least broadly in a particular way so as to perform its function); or (ii) from the market to demonstrate that there was design freedom in practice. 

The CA stressed the importance of providing the court with proper reproductions of photographs in cases involving registered designs, and stated that those conducting such cases should take personal responsibility for this.

The Informed User

There was no dispute as to the characteristics of this notional character.  The important point to note was that the informed user was reasonably discriminating; he paid a relatively high degree of attention, and was therefore not the same as the average consumer of trade mark law.  Neither a manufacturer nor a seller of the products in question, he had some awareness of the state of the prior art and used the product, in which the design was incorporated, as intended. 

Degree of design freedom

The principle of "degree of design freedom" in Article 9(2) plainly referred to the degree of freedom of the designer of the registered design, rather than of the alleged infringement.  However, in practice there would seldom be any difference and Arnold J was correct in observing that the degree of freedom may vary according to the technical specification of the product designed.  The fact that Arnold J had, on occasion, referred to the degree of freedom of the designer of the Mach Zen was not an error of principle. 

Arnold J had been correct to list the similarities relied upon by Dyson and consider to what extent they had technical significance and thus affected the degree of design freedom.  He was entitled to have concluded from the differences that the Mach Zen produced on the informed user a different overall impression.  There was nothing wrong with his conclusion that the overall impression produced by Dyson's registered design was smooth, curving and elegant, while the overall impression produced by the Mach Zen was rugged, angular and industrial, even somewhat brutal.  These were different designs.  The appeal was dismissed.

For more information on this newsflash please contact the author,

Hilary Atherton, Associate, London: hilary.atherton@twobirds.com