Considering Designs in a Vacuum

Courtesy of smosh.com

Vacuum cleaners and Kats don’t really mix.  The merest sniff of the Hoover (and before anyone asks: yes, it was) being dragged from its resting place used to be enough to propel this Kat’s now dearly departed old moggy into the grimalkin equivalent of orbit (which, for those not familiar with the aerospace aspirations of individuals of the feline persuasion, is somewhere close to the back of the airing cupboard).  It is therefore with a degree of trepidation that this Kat embarks upon discussion of the decision of the Court of Appeal, handed down late last week, in Dyson v Vax [2011] EWCA Civ 1206.

The dispute concerns an appeal from the judgment of Mr Justice Arnold ([2010] EWHC 1923 (Pat)) who had held Dyson’s UK registered design (No. 2 043 779) for the DC02 vacuum cleaner not to have been infringed by Vax’s Mach Zen C-91 MZ.  Sir Robin Jacob provided the main judgment, with which Jackson and Black LJJ agreed.

The judgment itself is relatively short: 40 paragraphs all in (Sir Robin contributed 34 to this number), spread over 10 pages.  The crux of the case is simply put: in the words of the Court the essence of the investigation was to determine “whether the Mach Zen “does not produce on the informed user a different overall impression”” from the registered design. 

Cautioning against adopting a metaphysical analysis, Sir Robin noted (at [8]) that “What really matters is what the court can see with its own eyes.”  Accordingly, whilst expert evidence might be important from the point of view of determining the existing design corpus, or the degree of freedom available to the designer in developing his design, its importance was limited. 

The Registered Design (side view)

In relation to the degree of design freedom experienced by the designer, Dyson argued that the Judge had concentrated too much on the technical reasons for some of the features, thereby downplaying the overall effect of the design.  Instead it argued that the Court should accept that the design freedom was great and that accordingly “because the DC02 was a major departure from anything that went before, its degree of protection should be correspondingly wide”. 

Sir Robin did not agree that the Judge had ignored the principle that “protection for a striking novel product will be correspondingly greater than for a product which is incrementally different from the prior art”.  Rather, he considered that Mr Justice Arnold had given due attention to this factor but have nevertheless still concluded that the overall impressions produced by the two designs were different.  Indeed, when comparing the Mach Zen and the registered design, Sir Robin noted that “One sees substantial differences.”  Most notably: 

"a)      Apart from having an arcuate portion, the wands are quite different, not least because the Mach Zen includes accessories whereas the DC02 does not.

b)      The pictures of the DC02 shows a flowing outer portion starting as part of the wheel arch behind the wheel, running over the wheel, sloping down to the front where it forms a "bumper" before flowing back on the other side. The Mach Zen has a wheel arch, but it is just over the wheel. It does not extend behind it. And far from flowing all round the machine, it terminates by the wheel and is replaced by a "running board." Moreover the place for fixing the hose is different (on top of the DC02 and on the front low down on the Mach Zen).

c)      The bins, although transparent, are quite different. Not only are the proportions different (the Mach Zen is taller) but they are differently shaped because the Mach Zen is stepped. And the cyclones you can see inside are shaped quite differently, one from the other. The handles of the bins are also very different, that on the DC02 being short and transparent so as to be unobtrusive, almost invisible, whereas the bin handle of the Mach Zen is a prominent feature, much longer and "gutter" shaped (a feature carried over into the arcuate rear handle.)

d)      The Mach Zen has the hose portion on one side of the "running board" – there is nothing like it on the DC02.

e)      The rear view of the two articles is very different, that of the DC02 being plain and smooth whilst that of the Mach Zen is complicated with a ribs and a much more prominent (and differently positioned) cavity for the plug.

f)       Views from the front are different – the different bin handle, the place for fixing the hose, the relative proportions of width and height and so on.

g)      The top views are very different, the top portion of the "shell" of the Mach Zen is keyhole shaped and very different from that of the DC02 which is much broader."

  

The Mach Zen (side view)

Accordingly, when viewed through the eyes of the informed user – a notional person: neither manufacturer or seller of products incorporating the design, but someone who pays a relatively high degree of attention when he uses the products concerned [as Merpel notes: essentially the Court with its reading glasses on] – the overall impression of the Mach Zen and the registered design were not the same.

The Court noted (at [30]) that “the list of nine features relied upon by Dyson is far too general. Thus it is no good saying "both have transparent bins through which the cyclone shroud is visible" when the reality is that both the bins and shrouds are very different in shape. You cannot take features of a design, turn them into general words and then treat those words like a patent claim.”

Therefore: 

[32] “…An informed user looking at the two designs would indeed notice the difference between them because the overall impressions are different: "smooth curving and elegant" versus "rugged angular and industrial." These are different designs.”

The Class 99 blog, has already posted further thoughts on the case.  As has Dyson, which issued a statement (reproduced in full on deezeen.com) in which it commented that:

“Dyson has lost its design rights case against Chinese-owned Vax (part of TTI). British courts failed to find fault with the Chinese conglomerate aping the appearance of Dyson’s iconic DC02 cleaner, bypassing inventiveness in favour of imitation, yet in France Dyson won its hard fought design case against the same firm (TTI).”

It continues:

"James Dyson: “By copying our design, Vax has attempted to ride our coattails, crudely cashing-in on the success we’ve built on better engineering. We’ve invested decades, not to mention millions, in creating better technology. And sadly we waste millions more in cases like this. We need to better protect British design.""

Sore loser?  Or legitimate grumbles?