How to assess registered design infringement

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The UK Court of Appeal has considered the issue of how to determine when a
product creates the same overall impression as a registered design, and therefore is an infringement of the registration.

Dyson Limited had UK registered design protection for the appearance of one of its cylinder vacuum cleaners, the DC02. Its competitor, Vax, had produced a
vacuum cleaner called the Mach Zen, which Dyson believed was an infringement of its registered design.

Dyson DC02                                                                  Vax Mach Zen

The Court of Appeal upheld the High Court’s decision to find that the Vax cleaner did not produce the same overall impression on the informed user. The Court of Appeal held that the two cleaners were different designs, with the Dyson cleaner being “smooth, curving and elegant” whilst the Vax cleaner was “rugged, angular and industrial”.

There was discussion concerning the characteristics of the notional “informed
user”, who the law states determines whether the designs produce the same
overall impression. The ruling confirmed that this person is neither a designer
nor technical expert, but is reasonably discriminatory and has a relatively high
degree of attention.

The judgement was scathing about the use of expert evidence to determine who the informed user was and the overall impression made by the designs, being of the opinion that should be possible to decide a registered design case in a few hours, and was also critical of the submission of nine written summaries of features of the registered design. This list was seen an attempt to define the design in terms of patent claims, when in fact it was simply the appearance of the product, as normally seen, that was relevant. The Court of Appeal also determined that there was, in any case, a technical reason for each of the nine features Dyson listed and that this therefore limited the design freedom of the designer. The informed user would therefore not consider the similarities listed by Dyson to be significant.

The decision confirmed that the most important things to look at in a registered
design case are the registered design, the alleged infringing object and the prior art, and that the most important thing about each of these is what they actually look like. The principle therefore remains that even where a design is considered to be of broad scope, it is irrelevant whether the designer thought he had made a breakthrough; the test is still a simple visual comparison between the appearances of the two designs.