Dyson Ltd v Vax Ltd

Dyson appeals, with the Judge‟s permission, from a judgment of Arnold J of 28^th July 2010, [2010] EWHC 1923 (Pat). He held that Dyson‟s UK registered design No. 2,043,779 (whose validity was not impugned) was not infringed by Vax‟s Mach Zen C-91 MZ vacuum cleaner.

Dyson‟s case was argued by Mr Henry Carr QC and Mr Hugo Cuddigan, Vax‟s by Mr Iain Purvis QC and Ms Anna Edwards-Stuart.

It is common ground that the scope of protection of a UK registered design is now governed by the Registered Designs Act 1949 as very substantially amended to implement the Designs Directive 98/71. As usual neither side saw any point in referring to the amended Act. What matters is the text of the Directive. So far is as material Arnold J set it out and I do not propose to do it all over again.

The subject-matter of the registered design is strictly that shown in the representations on the certificate of registration. These consist of various views of what is essentially the actual Dyson DC02, subject to this: that the real thing has a small departure from the design as registered in that its back is provided with slatted air holes whereas the back of the design as registered is smooth and unperforated. For practical purposes, bearing this in mind, it was useful to compare the actual DC02 with the Mach Zen. Both sides did so in the course of argument.

Annex 1 to this Judgment consists of the photographs of the certificate of registration. Although these are in colour it is common ground that the colour (of both the registration and the alleged infringement) should be ignored for the purposes of considering the scope of registration. This is because the statement of novelty says:

“The features of the design for which novelty is claimed reside in the shape and configuration applied to the article as shown in the representations.”

In order to obviate any risk that colour might enter into the comparison, the physical articles we compared were spray painted grey all over (including those parts visible through the clear dust collecting bins).

Annex 2 to this Judgment consists of a series of photographs of the Mach Zen, each one corresponding to a photograph of the registered design. I should point out that unless one has very good copies the photographs do not convey the full visual flavour of the two articles. It is essential in cases involving registered designs (and trade marks for that matter) for the court to have proper reproductions – otherwise the court wastes time. Those responsible for conducting such cases should take personal responsibility for this – it is not a matter to be left to secretaries or trainees.

This is apparently straightforward. It is simply whether the Mach Zen “does not produce on the informed user a different overall impression”, Art. 9(1).

Not only is that question apparently straightforward, but, I think, it actually is. It is possible to produce much elaborate argument and evidence – some of which seems to touch upon metaphysics – but generally none of that matters. What really matters is what the court can see with its own eyes. I said (with the other members of the court concurring) as much in Procter & Gamble v Reckitt Benckiser [2007] EWCA Civ 936, [2008] Bus LR 801:

I added this:

It is highly desirable in a registered (or indeed unregistered) design action that, if permission to give expert evidence is to be given at all, the precise ambit of that evidence should be defined. This was the procedure adopted in the present case by order of Arnold J who heard the Case Management Conference. The expert should be told what question or questions he is addressing and confine himself to these. The same is often true in other cases: left to their own devices experts all too often address questions of their own choosing.

It is, of course, necessary to consider the registered design in relation to what went before (the “existing design corpus”, see Recital 13). An expert can assist in relation to this, but seldom if ever will this be controversial. In the present case there was no matter calling for extensive expert evidence. There was a sterile controversy as to whether one considered the corpus to consist of cylinder vacuum cleaners, as Dyson contended or nothing (as Vax contended) but that was hardly a matter for expert evidence at all. Arnold J concluded (and there is no challenge) that the corpus was cylinder cleaners and that these by and large consisted of sledge or tank types.

Whatever the corpus, the registered design was a great departure from that which went before. That was obviously so, as was rightly admitted in the Defence and was not disputed in the expert evidence. There was no dispute between the parties about the prior art as shown for example in the various Argos catalogues we were shown.

Expert evidence can of course be relevant to “the degree of freedom of the designer in developing his design” which, by Art. 9(2) must form part of the assessment of the scope of protection. The evidence can take two forms – technical (typically why a thing or part of a thing must be shaped at least broadly in a particular way so as to perform its function) or from the market to demonstrate that there is design freedom in practice. Again it should normally be practical to agree these matters.

There was no dispute as to the characteristics of this notional character. Borrowing from the Judgment:

The important point to note is that the informed user is reasonably discriminatory (“a relatively high degree of attention”): not the same person as the average consumer of trade mark law (see also P&G at [24-26]). Principles to be applied by the Court of Appeal

I set these out in P&G:

Mr Carr accepted he had to show an error of principle.

Art. 9(2) speaks of the “degree of freedom of the designer in developing his design”. That to my mind plainly refers to the degree of freedom of the designer of the registered design, not the degree of freedom of the designer of the alleged infringement. In practice there will seldom be any difference: only if there is some sort of significant advance in technology will the freedom change between the date of creation of the registered design and the date of creation of the alleged infringement. Mr Carr complains that in several places the Judge referred to the degree of freedom of the designer of the Mach Zen (e.g. [65] and [73]). Technically I think the Judge should have focussed only on the degree of freedom surrounding the design of the DC02. But I cannot see that it matters. For there was no evidence of any change in degrees of freedom between the date of design of that and the date of design of the Mach Zen.

What the Judge did observe was that the degree of freedom may vary according to the technical specification of the product being designed. That seems true – for instance a

It follows that I do not think the Judge made any relevant error of principle when considering the degree of design freedom when he referred to the freedom of the designer of the Mach Zen.

Mr Carr put his suggestion of error of principle another way. It came out in a particularly striking interchange between him and Black LJ:

I do not read the Judgment in that way at all. Nowhere does the Judge say anything of the sort. All he did was to go through the list of nine similarities relied upon by Dyson to consider to what extent they had technical significance and thus affected the degree of design freedom. That he was enjoined to do by Art. 9(2).

Thus, for instance, he found on the evidence that:

It is not necessary to go further. The other five similarities are dealt with in the same way.

Mr Carr submitted that the Judge made too much of these technical reasons, leading him to downplay the overall effect. He showed us other machines where different technical solutions had been used, as for instance by using a “full” beeper instead of a transparent bin or casters instead of rear wheels. He emphasised that these showed there was really a lot of design freedom and that accordingly the Judge had downplayed the nine features relied upon too much.

The upshot of Mr Carr‟s submission was this: that in reality there was a lot of design freedom and, because the DC02 was a major departure from anything that went before, its degree of protection should be correspondingly wide. The Judge had lost the wood (the general overall impression of this strikingly new design) for the trees (the detail of implementation, such things as the actual shape and proportions of the transparent bin, the detail of the arcuate handle, the detail of the wheel arches and so on).

He submitted that the Judge, even though he explicitly held that the registered design is “strikingly different” from the existing design corpus [58] had failed to apply the established principle that:

Mr Purvis submitted that the Judge did not ignore this principle – he indeed allowed for it in his concluding paragraph:

Mr Purvis also took us through a comparison, picture by picture, of the DC02 and the Mach Zen. The reader can do the same from the Annexes to this judgment though we had the advantage also of the actual articles. One sees substantial differences. I pick a few of the more significant:

On the basis of these differences Mr Purvis submitted that the Judge was entitled to conclude that the Mach Zen did produce on the informed user a different overall impression. Moreover 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.

I accept Mr Purvis‟s submissions. What the Judge said was:

I can see nothing wrong with that conclusion. Indeed even if the Judge had wrongly discounted the sloping transparent bin, the large rear wheels and the curved handle too much (assuming a greater degree of freedom than he allowed for) so I was free to form my own opinion, I would have come to the same conclusion. 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.

Accordingly I would dismiss the appeal.

I would only add one matter, irrelevant in this case. In P&G I drew attention to the difference between Recital 14 and Art. 6 of the Design Regulation (EC 6/2002). The former uses the expression “the design clearly differs” whereas the latter merely says “differs.” “Clearly” does not reappear. I thought the difference was deliberate and so had some significance. I was wrong, though that does not affect the main reasoning in P&G. The difference in wording is merely the result of sloppy drafting as has been pointed out by Dr Alexander von Mühlendahl in Design Protection in Europe, 3^rd Edn. (2009 at pp.232-3). The same of course applies to the identical wording in the Directive (Recital 13 and Art. 9).

I agree that this appeal should be dismissed, for the reasons given by Sir Robin Jacob.

I only wish to add one comment in relation to expert evidence. In Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, [2008] Bus LR 801 Jacob LJ gave valuable guidance as to the limited role of evidence in registered design cases. At paragraphs 3-4 he said this:

“3.

The most important things in a case about registered designs are: (i) the registered design; (ii) the accused object; (iii) the prior art. And the most important thing about each of these is what they look like. Of course parties and judges have to try to put into words why they say a design has „individual character‟ or what the „overall impression produced on an informed user‟ is. But „it takes longer to say than to see‟ as I observed in Koninklijke Philips Electronics NV v Remington Consumer Products Ltd [1998] RPC 283, 318. And words themselves are often insufficiently precise on their own.

4.

It follows that a place for evidence is very limited indeed. By and large it should be possible to decide a registered design case in a few hours. The evidence of the designer, e.g. as to whether he/she was trying to make, or thought he/she had made, a breakthrough, is irrelevant. The evidence of experts, particularly about consumer products, is unlikely to be of much assistance: anyone can point out similarities and differences, though an educated eye can sometimes help a bit. Sometimes there may be a piece of technical evidence which is relevant – e.g. that design freedom is limited by certain constraints. But even so, that is usually more or less self-evident and certainly unlikely to be controversial to the point of a need for crossexamination still less substantial cross-examination.”

The only matter upon which expert evidence was required, or indeed was admissible, in this case was the extent of the technical constraints upon design freedom.

It is anticipated that next year CPR Part 35 will be amended in a number of respects. One amendment will require a party, on a permission application for expert evidence, to specify the issues which the expert will address. Another amendment will encourage, but not compel, any court giving permission for expert evidence to specify the issues which the experts should address.

Courts already have the power to limit and focus expert evidence. If they do so more often (which I hope will be the effect of the forthcoming rule amendments) substantial costs will be saved.

I agree with both judgments.