Newsletter Article
Interpreting Industrial Design Registrations
Published: 11/22/2011
By John McKeown In September of 2010, we discussed an English trial decision that illustrated important principles concerning the scope of protection available for registered industrial designs. Please click here to view the article.
The Facts
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.
The defendant launched a multi-stage cyclone vacuum cleaner. The plaintiff objected and initiated proceedings.
Photographs of side views of the respective products are reproduced below.
Figure 1 (above): Side view of Dyson Ltd. cylinder cleaner
Figure 2 (below): The defendant launched a multi-stage cyclone vacuum cleaner.
The Trial
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 Judge observed that while it is proper to consider both similarities and differences between the respective designs, what matters was 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.
The Appeal
On appeal to the UK Court of Appeal, the question was whether the Judge had erred in his conclusion that the defendant’s product produced a different overall impression on an informed user. The Court said the most important things in a case about a registered design are:
(i) the registered design,
(ii) the accused object, and
(iii) the prior art,
and the most important thing about each of these is what they look like. Of course, the plaintiff, defendant and the Judge have to try to put into words why they say a design has “individual character” or what the “overall impression produced on a informed user” is. But, it takes longer to articulate what is in issue than to see it and words frequently are insufficiently precise by themselves. As a result, the place for evidence in a case of this nature is limited and it should be possible to decide a dispute in a limited period of time.
Not only is the question apparently straightforward, it is actually straightforward. It is possible to produce much elaborate argument and evidence, some of which could touch upon metaphysics, but generally none of this matters. What really matters is what the Court can see with its own eyes.
The Court concluded that the Trial Judge had made no error when he found that the overall impression created by the defendant’s product on an informed user was different than that of the plaintiff’s. An informed user looking at the two designs would notice the difference between them because the overall impressions are different “smooth curving and elegant” versus “rugged angular and industrial”. They were different designs. As a result, the appeal was dismissed.
A number of statements were made in this judgment about the lack of the benefit of expert evidence in cases of this type. Similar statements have been made by the Supreme Court of Canada in a recent case involving trade-marks. This appears to be a new continuing theme.
Comment
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 by the UK Court of Appeal can be applied in a specific case. In addition, a UK appellate decision is more persuasive, although not binding, in Canada.
Obtaining registration under the Act can be an important element in protecting product shape and appearance, but the protection available only goes so far.
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