Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206, 27 October 2011
Summary
The Court of Appeal (CA) has delivered its judgment in Dyson Limited v Vax Limited, a case concerning a UK registered design for a cyclonic vacuum cleaner. The CA upheld the earlier decision of the High Court that Vax's Mach Zen model did not infringe the registered design of Dyson's DC02 as the design of the Mach Zen produced a different overall impression on the informed user. The decision reviewed the issues to be considered in registered design infringement claims, and in particular highlighted that the need for expert evidence in design cases is very limited, and that, when expert evidence is required, the expert should be specifically instructed in the specific questions to be addressed.
Background
Under the Registered Designs Act 1949, as amended, a registered design owner has the exclusive right to make articles incorporating that design for a maximum period of 25 years following registration. Dyson, a pioneer in the development of cyclonic vacuum cleaners, obtained a registered design for the appearance of its DC02 in 1994 (No. 204379). The registration claimed that "the features of the design for which novelty is claimed reside in the shape and configuration applied to the article as shown in the representation".
In 2009 Vax launched the Mach Zen cleaner and Dyson claimed
infringement of its registered design. In the High Court, Arnold J
held that there was no infringement as the overall impression
produced on the informed user by the Mach Zen was different from
that produced by the registered design. Dyson then appealed.
To view the pictures of the design and the Mach Zen follow the full
decision link here.
High Court
Arnold J dismissed Dyson's claim in the High Court as he considered that the two designs gave a different overall impression to the informed user. He held that although the informed user would notice similarities between the two designs (the transparent bin and large rear wheels, amongst others) these were not significant. Furthermore, he considered that some of the identical and similar features of the Dyson and Vax cleaners, particularly the angle of the cylinder and the transparent bin, were necessitated by technical constraints that limit and restrict design freedom, and accordingly, that the scope of protection afforded by Dyson's registration was narrowed.
Court of Appeal
Sir Robin Jacob, who gave the leading judgment, upheld the
decision of the High Court and concluded that Arnold J had made no
error of principle in concluding that the Mach Zen did produce a
different overall impression on the informed user. Sir Robin Jacob
also reiterated that the subject matter of the registered design is
strictly that shown in the representations on the certificate of
registration, and that colour (of both the registration and the
alleged infringement) should be ignored for considering the scope
of registration. To this end, the physical articles compared by the
Court of Appeal were spray-painted grey. He also stressed that in
cases involving registered designs (and trade marks) it is
essential for the court to have proper reproductions of the
articles.
The key legal question for the Court was whether the Mach Zen
"does not produce on the informed user a different overall
impression" than that produced by the registered design. Sir
Robin Jacob reiterated that the most important issues in a case
about registered designs are: (i) the registered design; (ii) the
accused object; and (iii) the prior art, and emphasised that
"What really matters is what the court can see with its own
eyes". He therefore criticised Dyson's approach of setting
out a list of nine specific similarities between the Mach Zen and
the design, which he said was far too general: for example,
although it was correct that "both have transparent bins
through which the cyclone shroud is visible", the reality was
that both the bins and shrouds are very different in shape. It is
not appropriate in a registered design case to take features of a
design, turn them into general words and then treat those words
like a patent claim. Here, the overall impression of the design was
"smooth, curving and elegant"; that of the Mach Zen was
"rugged, angular and industrial, even somewhat brutal".
Sir Robin concluded that these were different overall impressions,
and therefore different designs.
The decision is also of importance because Sir Robin Jacob also
stated that in the limited number of cases where expert evidence is
helpful, the expert should be given clear guidance on the specific
question to be addressed. Jackson LJ agreed with Sir Robin's
judgment and also noted that Part 35 of the CPR will be amended
next year to require a party, on permission application for expert
evidence, to specify the issues to be addressed by the expert.
Furthermore, Jackson LJ noted that a court giving permission for
expert evidence will in future be encouraged, but not compelled, to
specify the issues which the experts should address.
Comment
It is unsurprising that Dyson appealed the decision of the High Court as the company has a record of defending its IP energetically through the courts. Indeed, Dyson recently won a case against Vax's sister company Dirt Devil, in France, involving the same design and infringing article. Both Vax and Dirt Devil are owned by the China-based company TTI. Commenting after the Court of Appeal judgment, Dyson said, "it is galling and mind-boggling. There is something very off when we get support from the French courts but not from the British. We need to better protect British design".
Sir Robin Jacob emphasised once again that the assessment of overall impression is a subjective matter at the discretion of the court. As he previously noted in Procter & Gamble v Reckitt Benckiser "the test is inherently rather imprecise". However, he also referred to his previous comment (again in Procter & Gamble) that an appellate court should not reverse a judge's decision unless he has erred in principle. Unsuccessful design litigants should therefore be cautious about proceeding to appeal simply on the basis that they disagree with the court's assessment of overall impression.
For the full decision, please click here.
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The original publication date for this article was 08/11/11.
