‘Vacuum wars’ prompt IP questions

Dyson has come to represent something of a flagship for innovative UK manufacturing in recent years. Rightly or wrongly, the company has come to symbolise a standard of excellence in British design, manufacturing and marketing that it is fervently hoped that others will follow. Indeed, such is the strength of the brand that, at a recent industry event, the only living engineering 'hero' many could name was the company's founder, Sir James Dyson. While technological innovation has of course been at the heart of Dyson's success, another major factor has been its highly distinctive and game-changing designs. The appearance of its products has instantly branded them in the minds of consumers and reinforced technological innovation with practical, attractive and desirable aesthetics. Given the importance of these designs, Dyson's recent defeat in its appeal of a lawsuit for infringement of a registered design against Vax has sent shockwaves not only through the company itself, but also throughout everyone in the UK design community concerned with the protection of IP. As one spokesman for Dyson put it during my research for this article: "If we, with our in-house teams of lawyers and IP experts can't protect ourselves, who can?" Doubtless, much of UK manufacturing is currently asking itself the same question. The case centred on two products, Dyson's DC02 vacuum cleaner and Vax's Mach Zen vacuum cleaner (pictured). The DC02 cylinder vacuum cleaner, with its distinctive and innovative sloping transparent dust container, had almost become an iconic Dyson product. Thus, when Vax started to produce a similar-looking vacuum cleaner – the Mach Zen – Dyson sued Vax for registered design infringement. However, Dyson originally lost in the UK High Court because the trial judge held that the Mach Zen produced "a different overall impression on the informed user" (this being the test for infringement) compared with the design as depicted in Dyson's UK registered design. The question in this instance centred on the 'design rights' established by Dyson's original registered design. This dated back to 1994 and – as dictated by the law at the time – concerned the design of the product as a whole. So what exactly is a registered design? Commercially, a newly-developed product may merit being protected by a variety of different forms of intellectual property protection. For example, a new product might include a technical innovation that could be protected by means of a patent application, make use of a new brand name that could be protected by means of a trade mark application and have a new visual appearance. It is the new visual appearance that may well be protectable by one or more registered design applications. It is possible to protect a 3-D visual appearance. It is also possible to protect 2-D aspects of visual appearance, such as any 2-D surface decoration. Under the modern law on registered designs, the registered design may be concerned with the whole or just part of a product. Registered design, then, was the substance of the dispute between Dyson and Vax. In assessing the scope of protection by using the test of whether the alleged infringement did or did not 'produce a different overall impression on the informed user' the court will assess whether the designer had a limited degree of 'design freedom' (which narrows the scope of protection of the registered design) and will also assess who is the 'informed user' who has to apply the infringement test. The UK Court of Appeal applied the case law that the informed user is a notional person who adopts a middle position between being an expert and being an uninterested member of the public, and the informed user is a person who pays a relatively high degree of attention when he uses the product in question. The Court of Appeal then considered whether the designer had a lot or a little 'design freedom' in devising the design of the registered design. The original trial judge had felt that a significant number of the design features were present for technical reasons, and thus that designer had limited design freedom (which implies a narrowish scope of protection for the registered design). These 'technical' design features included: the 45° slope of the dust container bin; the fact that the bin is transparent; why large wheels are at the rear of the vacuum cleaner; why the rear wheels are spaced apart; and why there are prominent wheel arches over the wheels with buttons incorporated into the wheel arches. According to Paul Price, a patent attorney and European design attorney for leading IP law firm D Young & Co LLP, this issue of design freedom is one that can make protection of design features difficult. He says: "As a rule of thumb, if it becomes technically necessary for certain design features to be present in order for the product to conform to a commercially-acceptable model, the designer is said to be constrained and those features can be difficult to protect." The appeal court judges agreed with the trial judge regarding his assessment of these 'technical' design features and they also felt that the remaining features of the registered design were not taken by the Mach Zen machine to a sufficient extent for it to produce the same overall impression on the informed user, and thus that the Mach Zen had been correctly held not to be an infringement. These remaining design features which produced a different overall impression included: differences between the wands of the registered design and the Mach Zen in relation to their shape and attachment point to the main body of the vacuum cleaners; differences in how the wheel arches flow forwards; and differences in the external shapes of the bins and the internal cyclones that can be seen inside. The appeal judges described the registered design as producing a visual impression that is "smooth, curving and elegant" whilst that of the Mach Zen is "rugged, angular and industrial" with the end result that the informed user would consider that the Mach Zen produces a different overall visual impression and thus is not an infringement. However, it is important to remember that the registered design had been obtained under the old law. According to Paul Price, this fact means the Appeal Court's decision may not be quite as crushing to the hopes of UK designers as might at first be thought. He says: "This was a very old registered design that was filed in 1994. Back then, you used to have to register the whole design of a product. Under the new law, you are able to protect particular parts of a design, which allows you to focus in on aspects of your product that you feel a competitor may want to copy and protect them accordingly. Thus, in this case, Dyson could have registered the design of the 45° angle of their product's inclined bin or the large wheels at the rear of the machine." Anthony Albutt, a partner in D Young & Co's Electronics, Engineering and IT Group believes that, this judgment aside, the law as it now stands actually provides an impressive level of protection for designers. "I don't see things as being all doom and gloom. In fact, I think the law has evolved quite usefully for designers overall," he says. "Under the new law, things are pretty good. If you can show it, you can protect it. The protection of registered designs actually provides an incredibly powerful legal tool. A lot of people think solely in terms of patents, but they should be looking at design rights as a very powerful tool." The decision in the Dyson vs Vax case may cause some alarm, but Albutt feels it may be seen as anomalous in years to come. He says: "When you see the judgment at first, you think it's unbelievable that Dyson weren't able to protect their design, but in fact, it's really just a legacy of the old law." In terms of the lessons to be learned, however, Paul Price says: "Perhaps a lesson for future innovative designs would be to sit down and consider what aspects of the design are likely to be attractive to competitors, and then file to protect those aspects of the product by means of separate registered designs, taking advantage of the possibilities offered here in the UK (and in the EU) by the modern registered design law with its ability to protect part of the overall design of a product in addition to protecting the overall design of the product."