High Court ruling in breast pump design infringement claim highlights tension with patent law
Locations
In a rare registered design rights case heard before the UK High Court, baby feeding brand Tommee Tippee's owner Mayborn (UK) Ltd successfully defended infringement proceedings brought by Chiaro Technology Ltd, the parent company of women's tech brand Elvie.
In the judgment handed down on 5 October 2023 (Chiaro Technology Ltd v Mayborn (UK) Ltd [2023] EWHC 2417 (Pat) – not publicly available at the time of writing), Sir Anthony Mann J found that Mayborn's design for the Made for Me Wearable Breast Pump ("MFM") created a different overall impression to Chiaro's design for the Elvie pump.
Background to the dispute
Chiaro Technology Ltd registered three designs in relation to an electric breast pump device with an integrated milk collection vessel intended to be worn and operated hands free within the wearer's bra. Chiaro incorporated most elements of those designs in its popular Elvie pump, which was marketed as a "revolution" in the sector. Chiaro also filed a patent application for the Elvie pump.
Mayborn later launched the MFM featuring many elements of Chiaro's registered designs.
Chiaro claimed Mayborn infringed its registered designs
Chiaro contended that the MFM did not produce a different overall impression on the informed user, which it argued to be a nursing mother, due to the products' similar "tear drop" or egg shape design with a flat bottom. As such, Chiaro maintained that Mayborn's MFM infringed its three registered designs pursuant to section 7(1) of the Registered Designs Act 1949 ("RDA").
Conversely, Mayborn argued that the Elvie pump's overall shape, as well as many of its individual elements, were dictated purely by technical function. Therefore, the MFM was not infringing Chiaro's rights, as the designer had no freedom in relation to those elements required to achieve the desired functionality.
The decision
In his judgment, Mann J set out a helpful reminder of the steps that the court must follow when assessing the overall impression conveyed by a registered design as opposed to a contested design. Specifically, the court must:
- define the relevant sector wherein the products incorporating the designs fall;
- identify the informed user and their degree of awareness of (and level of attention to) the prior art; and
- decide the degree of freedom which the designers had when developing their design, excluding any elements dictated solely by technical function.
While the judgment addressed the first two steps in a straightforward manner, Mann J's ruling turned on the third step. Specifically, on the issue of technical function and its interaction with the patent corpus (including Chiaro's own patent application for the Elvie pump).
The sector the informed user, and her awareness
Mann J held that the relevant sector was electrical breast pumps, as he deemed general breast pumps to be too wide a definition, whereas wearable in-bra breast pumps was too narrow.
Further, Mann J held that the informed user was a nursing mother or a wet nurse applying a consumer's eye to the product, but still interested in both its operational and aesthetic features.
Technical function and the significance of patents
Mann J agreed with Mayborn that several elements of Chiaro's designs were functional, not aesthetic. Specifically, the court held that the curved egg-shaped front of the pump was necessary to fit within a bra; the flatter concave back of the product was exclusively dictated by function to adhere to the wearer's breast while operating hands free; and the milk collection vessel was located at the bottom so that gravity would allow milk to accumulate in the container, whereas its flat bottom was required for the unit to stand on a surface without spillage.
As part of Mayborn's defence arguments, the court considered whether filed patents relating to wearable breast pumps (including Chiaro's own patent application for the Elvie pump) were to be considered proof of Chiaro's designs' functionality. While Mann J rejected Mayborn's contention that such evidence should be conclusive, he confirmed that filed patents constitute persuasive evidence.
Further, Mann J reiterated that an element of a design can be dictated by technical function regardless of that function being achievable through another design, thus expressly rejecting the "multiplicity of forms" argument. As such, the court need only determine if a design element is the result of a product's functionality.
Finally, the court clarified conflicting case law, and confirmed that that the subjective intentions of the designer should not be taken into account when determining whether a design has been dictated by technical function. Mann J held that such assessment should be made solely considering the conflicting designs because any subjective intentions are not usually available to a third-party assessor.
Therefore, the court held that the curved egg-shaped outer surface; the flatter concave inner surface; and the milk collection vessel's position and shape could not form the basis of a registered design infringement claim pursuant to section 1C(1) RDA, and should not be considered when comparing the overall impression of the MFM and Elvie pump.
Design freedom and conclusion
In light of the above exclusions, Mann J found that there was limited design freedom. As such, the differences between the MFM and the Elvie pump were deemed sufficient to create a different overall impression in the eye of the informed user.
In so doing, the court confirmed that the principle granting greater protection to a design that is more striking than the prior art does not apply where there is limited design freedom due to technical requirements. Mann J held that, while the design corpus was wearable electric breast pumps, the assessment should not follow a top-down approach. Instead, the starting point should be the product itself, and the court had to take into account the constraints on design freedom which were created by functional and other requirements of the product.
As a result, none of Chiaro's registered designs was found to have been infringed by Mayborn's MFM.
Why this case is significant
This case is doubly significant, and it should be of great interest to brands whose products blend innovative design with an inventive technological step.
This is a rare instance of a registered design infringement claim reaching its full conclusion in the UK High Court, thereby setting out a helpful reminder of the tests and principles that the court will apply in its assessment.
Additionally, the judgment shows the tension between registered designs and patents, and it serves as a stark reminder to manufacturers and designers that registered design rights will not protect technical innovation, but only aesthetic features.
Finally, practitioners should be aware of the impact that filed patents can have on the enforceability of their client's registered design rights, as elements described as having a technical function in the former may well be excluded from the overall impression assessment in an infringement claim for the latter.