This article was included in the winter 2011/12 issue of snIPpets - the intellectual property newsletter.
Dyson Ltd v Vax Ltd  EWCA Civ 1206
The Court of Appeal has dismissed an appeal by Dyson Ltd against Vax Ltd for UK registered design right infringement. Dyson Ltd claimed the design of the "Mach Zen" vacuum cleaner produced by Vax Ltd infringed their registered design for the "DC02" vacuum cleaner. The Court of Appeal concluded that whilst the design of the DC02 was markedly different to existing designs and so should enjoy a fairly broad scope of protection, there was no infringement since an informed user looking at the two designs would notice the difference between them because the overall impressions are different.
The key legal question
This was relatively straight forward – the court needed to decide whether the Mach Zen produced on the informed user a different overall impression to the registered design.
To answer this question the Court agreed that the most important evidence to consider in a case about registered designs is what the registered design, the accused object, and the prior art looked liked.
The Court concluded that the role of expert evidence in registered design cases was minimal. Whilst expert evidence may sometimes help with assessing whether the design freedom was limited by certain constraints, it is usually more or less self-evident.
It was agreed that the "informed user" in this case would be a knowledgeable user of vacuum cleaners. It was emphasised that this was not the same as the average consumer of trade mark law, but someone who had a "relatively high degree of attention" and who knew the various designs out there at the relevant time without being a designer or technical expert.
The Court discussed the concept of the "degree of design freedom" and agreed that parts of a design which are constrained by technical function (i.e. there is no other way of designing it in order for it to perform its function) cannot be registered. Dyson relied on nine similarities between the DC02 and the Mach Zen. Examples included the 45° inclined bin; the transparent bin; and the large wheels at the rear of the machine. For each of the similarities, the Court found that these similarities were due to technical reasons and therefore not significant.
The Court concluded that there were other aspects of the two designs which were different and would be considered by the informed user as significant e.g. the rear view, the hose connector position, and the bin handle. The Court decided that these would therefore give the informed user a different overall impression: "smooth curving and elegant" (for the DC02) versus "rugged angular and industrial"(for the Mach Zen). The designs were different.
Dyson has been ordered to pay Vax's costs of nearly £200,000.
The judgment highlights the difficulty in bringing a successful design right infringement action against a third party, and shows the costly nature of litigation for the losing party.
It appears that the need for expert witnesses in such cases is now redundant (which is good from a costs perspective) as the Courts appear to be more inclined to answer the question of what is technical themselves, and have so far given a broad interpretation. This therefore means, the more parts of a design the Courts are prepared to attribute to technical constraints, the fewer parts there will be left for a Designer to enforce - what then is the benefit of registering a design? Registering a design is still highly recommended since it acts as a deterrent to other designers. A well registered design right can be a major bargaining tool, and can often lead to infringement claims settling before they get to trial. It also negates the problem of having to prove subsistence and ownership as is the case with unregistered design rights.
Philip Bilney, Trainee Solicitor, IP Protection and IP Enforcement and Litigation at Fieldfisher.