IP Cases & Commentary – Details
15 November 2011
Vacuum Cleaner 'Wars' - Dyson v Vax
The UK Court of Appeal handed down a decision on 27 October 2011 that provides some useful guidance regarding construing the scope of a national UK registered design.
And, because these days the law governing registered designs is harmonised at the national level in the European Union (EU) and also at the European level in relation to a Registered Community Design (RCD) covering all countries of the EU, the decision also indirectly provides guidance on construing the scope of an RCD, at least when the RCD is being litigated here in the UK rather than in one of the other EU countries.
The case concerned Dyson’s national UK registered design No. 2,043,779 for their DC02 cylinder vacuum cleaner with its distinctive and innovative sloping transparent dust container (see the side view taken from the UK registered design, far left).
Vax had started to produce a similar-looking vacuum cleaner (see the side view of their Mach Zen cleaner, above right) and Dyson sued Vax for registered design infringement, but Dyson lost in the UK High Court (the court of first instance) because the trial judge held that the Mach Zen produced “a different overall impression on the informed user” (this being the test for infringement) compared with the design as depicted in Dyson’s UK registered design.
Dyson appealed to the Court of Appeal, and unfortunately for Dyson the appeal judges upheld last year’s decision of the trial judge.
It is interesting to note that the appeal has been heard speedily (which suggests that the UK is a convenient forum for litigating intellectual property disputes) and it is important to remember that the appeal court does not reconsider the case from scratch. Instead, the appeal court needs to be persuaded that the court of first instance 'has erred in principle' in a substantive way.
The validity of the UK registered design was not in dispute between the parties. The whole case was merely concerned with construing the scope of protection of the UK registered design, and then deciding whether the alleged infringing product (Vax’s Mach Zen) is or is not within the construed scope of protection.
The UK registered design had been filed in 1994 under the old UK registered design law, and thus it was filed in the days when scope of protection was construed differently. These days, scope of protection is construed under the new (EU harmonised) national registered design law that was brought into force in the UK in December 2001.
When assessing the scope of protection by using the test of whether the alleged infringement does or does not 'produce a different overall impression on the informed user' the court will assess whether the designer had a limited degree of 'design freedom' (which will tend to narrow the scope of protection of the registered design) and will also asses who is the 'informed user' who has to apply the infringement test.
The UK Court of Appeal applied the case law that the informed user is a notional person who adopts a middle position between being an expert and being an uninterested member of the public, and the informed user is a person who pays a relatively high degree of attention when he uses the product in question.
The Court of Appeal then considered whether the designer had a lot or a little 'design freedom' in devising the design of the registered design (not the design of the alleged infringing product). The trial judge last year had felt that a significant number of the design features were present for technical reasons, and thus that designer had limited design freedom (which implies a narrowish scope of protection for the registered design). These 'technical' design features included: the 45° slope of the dust container bin; the fact that the bin is transparent; why large wheels are at the rear of the vacuum cleaner; why the rear wheels are spaced apart; and why there are prominent wheel arches over the wheels with buttons incorporated into the wheel arches.
The appeal court judges agreed with the trial judge regarding his assessment of these 'technical' design features, and they also felt that the remaining features of the registered design were not taken by the Mach Zen machine to a sufficient extent for it to produce the same overall impression on the informed user, and thus that the Mach Zen had been correctly held not to be an infringement.
These remaining design features which produced a different overall impression included: differences between the wands of the registered design and the Mach Zen in relation to their shape and attachment point to the main body of the vacuum cleaners; differences in how the wheel arches flow forwards; and differences in the external shapes of the bins and the internal cyclones that can be seen inside.
Overall, the appeal judges characterized the registered design as producing a visual impression that is “smooth, curving and elegant” whilst that of the Mach Zen is “rugged, angular and industrial” with the end result that the informed user would consider that the Mach Zen produces a different overall visual impression and thus is not an infringement.
This is obviously a disappointing result for Dyson who had introduced an innovative design to the market.
Perhaps a lesson for future innovative designs would be to sit down and consider what aspects of the design are likely to be attractive to competitors, and then file to protect those aspects of the product by means of separate registered designs, taking advantage of the possibilities offered here in the UK (and in the EU) by the modern registered design law with its ability to protect part of the overall design of a product (including at an abstractised level that removes irrelevant detail unlikely to be copied by a competitor) in addition to protecting the overall design of the product.