Appearances can be Deceptive – An Update on the Scope of Registered Designs

Registered designs can provide a cost effective way of creating exclusivity for your products, particularly where aesthetics are important.  They can be especially useful in preventing knock-offs.  Below we discuss some important decisions that consider infringement of the right.

Dyson Limited obtained UK registered design protection for one of its cylinder vacuum cleaners, the DC02.  Its competitor, Vax, produced a competing cleaner called the Mach Zen. 

Dyson DC02

Vax Mach Zen

Dyson sued Vax for registered design infringement at the UK High Court and subsequently appealed to the UK Court of Appeal.  The Court of Appeal upheld the decision of the High Court, deciding that Vax did not infringe Dyson's registration because the two designs did not produce 'the same overall impression' on the informed user.  The Court of Appeal held that the two cleaners were 'different designs', the Dyson cleaner being' smooth, curving and elegant', the Vax cleaner being 'rugged, angular and industrial'.

The Court confirmed that the notional 'informed user' is neither a designer nor a technical expert, but is reasonably discriminatory and has a relatively high degree of attention. 

Expert evidence was supplied to try to define the informed user, and the overall impression made by the designs.  Dyson also provided nine written summaries of features of the DC02.  The judges dismissed this list as being an attempt to define the DC02 in terms of patent claims rather than considering the appearance of the DC02 as normally seen.  Importantly, the judge determined that there was a technical reason for the nine features and that this limited the design freedom of the designer.  The informed user would therefore not consider the similarities listed by Dyson to be significant.

The judges confirmed that the most important factors in a UK registered design case are the appearance of: 1) the registered design; 2) the allegedly infringing object; and 3) the prior art. 

This decision confirms the UK infringement test as being a simple visual comparison between the appearance of the two designs, and that registered design protection in UK can be relatively narrow.

New Zealand uses a different test being whether the article alleged to infringe has ‘substantially the same appearance’ as the registered design.  As with the UK, the scope of protection can be narrowed if relevant prior designs are identified.  NZ law also requires a statement of novelty to be filed which defines the scope of protection provided.    In Brand Developers v Ezibuy, abdominal exercisers were compared as shown below:

 

 

Registered Design

Alleged Infringement

 

Importantly, the statement of novelty of the registered design in question stated that ‘….. novelty resides in the features of shape and configuration of the exercise machine having a tubular ring and a pair of pivotally mounted knee rests movably supported on the tubular ring, as shown in the accompanying representations’.

In this case, relevant prior art was identified showing that the dual, incomplete circular ring arrangement of the alleged infringement was known before the registered design was filed.  This, in conjunction with the limiting statement of novelty filed, meant that the registered design could not protect the broad concept of any circular ring in conjunction with movable knee pads.  Or put another way, the registered design was limited to the single, complete circular ring as shown in the photos.   This case illustrates the potentially limiting effect of prior art, and also the care needed in not filing an unduly limiting statement of novelty.  Nonetheless, the test for infringement of a NZ registered design may offer broader protection than that in UK.

In NZ design infringement cases, there will often be a separate cause of action regarding infringement of copyright, for example in the appearance of the Dyson cleaner.  To succeed on this ground would require establishing a causal link between the product and the alleged copy, to prove that copying had taken place.  Infringement can be more easily decided based on copyright since the infringer need only take something substantial from the design, which may occur even if there are differences.  UK and EU law provides a similar right called ‘unregistered design right’ or ‘UDR’ which also requires copying to be established to succeed.  Unlike NZ industrial copyright, the term of EU UDR  is very short at only 3 years. 

In Australia, recent decisions seem to be strengthening registered design owners’ rights.  Nonetheless, the recent case of LED v Roadvision highlights the need for care in selecting what is shown in the drawings/photos filed in the application as this will define the scope of protection.  This case related to replacement rear light units for vehicles.  The design registrations concerned included views of the rear of each light unit, these being held to be sufficiently different from the rear of the alleged infringing unit that the units were not substantially similar in overall impression.  This was despite the fact that this feature would not be seen when the units were mounted on the vehicle.  So in this case, the design registrations arguably included non-essential features which ultimately were held to limit the scope of protection such that infringement was avoided.

In every jurisdiction, the scope of protection is defined by what is shown in the drawings or photos filed with the registered design application.  In some jurisdictions the scope of protection can be further defined by a statement of novelty or monopoly.  These cases confirm that considerable care needs to be taken when filing a registered design application to ensure that the scope of protection is as broad as possible.