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Friday, 4 November 2011

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?  

21 comments:

Anonymous said...

Given that the test for infringement seems to be impressionistic - what does the judge see - I wonder whether if the case had been reversed, the Dyson would have infringed the VAX. The VAX seems to have a more iconic design, with echoes of a DC10(?) aircraft, while the Dyson has some go faster bits that slightly modify the concept of a big wheel supporting a steeply angled undercarriage.

Anonymous said...

Sore loser.
Whinging loser.
No-interest-in-the-meaning-and-scope-of the-law loser.
I'm-a-celebrity-therefore-it's-wrong-for-the-court-to-find-against-me loser.
My-name-is-Dyson-and-play-the-great-British-inventor-card-and-therefore-it's-wrong-for-the-court-to-find-against-me loser.
I-employ-a-few-designers-in-the-UK-even-though-I-moved-my-manufacturing-to-cheap-labour-countries-in-order-to-make-myself-even-richer-therefore-it's-wrong-for-the-court-to-find-against-me loser.
My-vacuum-cleaners-are-too-heavy-for-many-people-to-lift-therefore-it's-wrong-for-the-court-to-find-against-me loser.
I-have-fixed-problems-with-products-where-none-existed-therefore-it's-wrong-for-the-court-to-find-against-me loser.

Need I go on? Get over it James. You did not invent the wheel, but did your best to uninvent it with your ball.

Anonymous said...

If the Vax isn't infringing Dyson's design right, I don't hold much hope for Apple in its battle against Samsung. Has this case been litigated in Germany? The courts there would, I think, have been much more favourable to Dyson.

Anonymous said...

Well then, how much does a design right protect in the UK? Just against photocopies? Just one attached bow and you go clear?

Filemot said...

This could not have come at a worse time for UK design law given the real prospect of UK registered design being abolished. The lead judges do seem to believe that it only protects *knock off* infrignement and not design contribution. For pure knock off protection copyright style is enough, no designer would pay for a registered copyright that artists and musicians have for free for longer than they live.
Registration is a good system as we know what is protected but it has to offer some rights attached to it and I can see why Dyson is offended but I see other commentors do not believe he has the klout left to influence government policy.

Anonymous said...

More comments clearly disgusted that companies other than Dyson are allowed to sell goods.

The design image is simply a photograph (badly lit and poorly composed) so please explain how the design is clearly represented and how 3rd parties are supposed to know what is covered and whether they would infringe? Please!

The main design features I can see (I don't need or wear glasses) is the S-curve from the lower wheel forming the arch of the larger wheel and the angle of the dust collector. The S-curve is not present in the alleged infringing device and my old hoover (with a bag - nice and light, easy to clean and a hose that actually flexes) is currently sitting angled in the same way.

As an overall design impression, the Dyson is smooth and sleek while the DAX is rugged and industrial.

If simply having the dust collector angled by used of different sized wheels fore and aft gives rise to a monopoly then design law would become as ridiculous and unpopular as copyright law.

Dave said...

I can't help but agree with anonymous at 9:56.

The "wheel as ball" concept was first used in victorian times, I seem to recall, and the cyclonic dust separation method was used in industrial air cleaners prior to being adapted by James Dyson for domestic portable vacuum cleaners.

He should accept that innovations, including his own, are built on existing technologies, and new designs can take inspiration from existing ones and still be quite different.

Perhaps if he contributed more to the British economy by actually retaining his manufacturing here I might have more sympathy, but he can't play the "damaging for UK inventors" card when he's having his inventions made overseas.

Anonymous said...

Go on Dyson - take this up to the Supreme Court. It wouldn't be the first time that a prima facie strong judgment by Jacob got over-turned. Top tip - take a leaf out of the HGS playbook by, say, getting an intervention from the UK Designers Guild, or British Vacuum Cleaners Designers Association, or something similar.

Anonymous said...

As for appealing to the Supreme Court...

Suck it and see?

Anonymous said...

Barbara, the problem in this case re "Registration is a good system as we know what is protected" is that we can't know what is protected due to the omnibus style claim of the photograph.

Designers don't simply draw an image of the final product when being 'creative', but focus more on themes, shapes and styles (I am NOT a designer so this is not language of the art). If Dyson or any other designer could illustrate a novel design with a few swoops and swirls then they would get pretty strong protection.

Omnibus claims are just a kop-out.

Protection for knock-off infringement is itself a powerful tool. Anything more must relate to original contribution.

Anonymous said...

If the Supreme Court are in a dodgy-decision making mode through lack of expertise then I can see a long queue forming.

Anonymous said...

I can well understand that design protection has so little scope when the imagination of commenters is so poor. The essence of Dyson's design is that we have a horizontal cylinder defined by the rear wheels, against which leans an inclined cylinder of essentially the same proportions. That is the novelty of the design. S-curve, my foot! One would think that designers all come from the motorcar industry.

It is only a pity that Dyson and his advisors did not see this and file some protective but possibly unused designs based on the same idea, just to fend off competitors trying to infringe this basic idea.

As to where manufacturing is to take place: present consumers are not acting in their home societies' best interests by buying goods manufactured by undercutting. I still remember when Far Eastern goods cost about one third of European manufacture, but European is what one bought to support our industries and basic skills. This is next to impossible to do today.

George Brock-Nannestad

Anonymous said...

Just like 'Catchphrase', I say what I see and I see an S-curve. The decision rests with the judges who also say what they see.

As for novelty, that is a nice patent-style claim that has been drafted, but any patent claim that fails to take account of prior art risks failure as soon as a piece of prior art turns up. It cannot therefore be said with any degree of certainty that novelty resides in the way you say George.

I don't remember a time when we bought 'European'. There was a phase of trying to get people to buy British but that seemed to stop when there was no more British consumer items left to buy. Now, it is very un-European to say promote British goods over those of our neighbours, even if Bang & Olufson aren't as good as Amstrad.

As for Dyson, nothing British, and his goods are over-priced. He has succeeded on the back of a false economic boom where too many people had money to waste. Getting a bit hot in here - must go and adjust my fanless cool air blowing device, which I like to refer to as a 'window'.

Anonymous said...

@Dave

> Perhaps if he contributed more to the British economy by actually retaining his manufacturing here I might have more sympathy

This is 2011 and your realistic choises are between companies that design in the UK and manufacture elsewhere; and companies that has only a front in the UK with design, manufacture and the rest elsewhere.

UK's reputation for manufacturing was completely shot in the 70's. Sure, some Japanese manufacturers started up in the UK but many have simply left. I cannot see those days ever coming back.

The difference between Europe and the US is that in the US successful designers are not chased out.

Anonymous said...

I'm surprised our little island is still floating, what with all the things we do to sink ourselves below the waterline. This time it seems we are chasing out all those great designers that help us keep afloat. I don't know where they've gone but maybe they are with the bankers, the entrepeneurs, the investors, the small businessman, the corporate businessman, the innovators, the world-class academics, not forgetting Mabel, the tea lady.

Personally speaking, the loss of Mabel is the greatest loss to the UK economy.

Anonymous said...

> He should accept that innovations, including his own, are built on existing technologies, and new designs can take inspiration from existing ones and still be quite different.

What a rather puzzling statement. A quick perusal of Patentscope shows he has filed numerous patent applications and use the EPO, thus it is quite reasonable to assume he is familiar with the two part form.

> Perhaps if he contributed more to the British economy by actually retaining his manufacturing here I might have more sympathy, but he can't play the "damaging for UK inventors" card when he's having his inventions made overseas.

So providing work for designer, co-inventors, accountants, several thousand employees world wide doesn't cut it. Just what is so sacred about manufacturing?

Anonymous said...

I'm a little puzzled by the Dyson statement. If I remember correctly, design right is all about the 3D shape, or aesthetics of an item and has nothing at all to do with the underlying technology. Indeed, features of an item that are related to its function are not protectable by design right.

I can see why Dyson is a bit peeved about losing but their talk of better engineering and better technology seems to me like an emotive smokescreen that has nothing to do with the actual case.

If Vax were infringing on Dyson patents however, Dyson's comments would be entirely reasonable.

Anonymous said...

@Anonymous "Monday, November 07, 2011 10:19:00 PM"

There is an element of novelty in all intellectual property, except concerning trademarks, well, even in the arts.

@anonymous "Tuesday, November 08, 2011 9:57:00 PM" who asked "Just what is so sacred about manufacturing?".

The simple reason is that we inevitably consume tangible goods and they have to manufactured. Virtual food and virtual transportation are only good in a virtual world.

If we could all be "designer[s], co-inventors, accountants" in e.g. the UK, it would be fine, we would have full employment and could each pay our way. However, that is not the case, and those that earn have to support those who do not, to prevent getting social unrest. There are many for whom manual labour is more satisfying than doing nothing, and there are many who would be better at manual, even repetitive, work than doing the work you identified.

Governments try to activate the unemployed by creating huge infrastructure projects. Such projects do not help the local unemployed, however, because EU-wide tendering required for even quite small projects will inevitably allow companies using labour from European countries where the wages are less to underbid the local companies bidding. So, all that such projects will do is to create worker migration from countries with lower wages to e.g. the UK. It does not reduce the unemployment burden on the UK society one bit.

That is why letting a valuable resource - local manufacturing - disappear, is so detrimental.

I hear protests already; the Word Verification required to comments says "NON NON".

George Brock-Nannestad

Anonymous said...

I agree there is novelty in IP, including Dyson's design. What you can't do is take a design application consiting of a photograph and then write a patent-style claim in order to determine its scope.

If Dyson wanted a broader scope he should have filed some more appropriate design applications. However, they may have all fallen down for being unoriginal, hence the omnibus photograph and the need for after-the-fact interpreation of scope.

He has enough attorneys so he should use them more appropriately, but my guess he is just trying to game the system with such an application.

Manufacturing? Aside from farming, what else is there that we depend on for our existence? Take a look at the global economy and work out why the 'rich' countries (US, Europe) are struggling to buy goods from the 'poor' countries (China etc - yes I mean before they collected all of our money). Something to do with the rich countries not generating the wealth to but these goods because so many people lost their jobs when the manufacturing moved to the poor countries?

Anonymous said...

Hooray at last someone has pointed out the flaw in Dyson's complaint:"If Dyson wanted a broader scope he should have filed some more appropriate design applications."

Exactly. The applicant for a registered design has a great deal of control over the scope, which Dyson chose not to use. Dyson chose (for example) to include the wand in the design, so cannot complain if a Vax product with a very different wand is outside the scope.

A comparison with Apple's design rights for the iPad is postulated above, but the contrast in tactics between the two companies is illustrative. Apple filed several parallel designs for the same product, with different features highlighted/omitted in each one. They did it almost to a ridiculous degree, but at least they applied thought to the protection they wanted.

The guilt on the part of UK designers is that they don't seek protection in the first place, or do it scrappily. The statistics on design applications by UK applicants compred with other nationalities are shameful.

In short, the protection can end up narrow, but if you don't even try to make it broad in the first place, don't complain.

If they wanted broad protection for just the wheels and the inclined cyclinder, a view with those features in solid lines and other features excluded would ave been an option. However, it is also correctly noted above the patents are therefore technical concepts. Monopolising technical features through the design registration system would create monopolies that are cheaper than patents, last longer than patents, with none of the examination or inventive step requirements. Given the lack of interest in filing by UK designers, most of those rights would belong to foreigners, and UK designers woudl complain about that instead.

So keep filing registered designs - file more. They are excellent against close copies and couterfeits anyway, and if you want broad protection, put some thought into your filing strategy & selection of views.

Anonymous said...

Dyson are currently running ads (The Times today) with an image of the few parts of one of their hoovers (as I still prefer to call them - thanks heavens that TMs are managed better these days so that 'Dyson' does not become generic) that competitors can copy. All other parts are said to be 'protected by Dyson patents'. I would be interested to know whether and to what extent patents actually protect all of these other components and whether Dyson's marketing department understand the difference between patents and designs.

If the advert statement is not wholly accurate, I wonder to what extent such an ad can be deemed to be an unauthorised claim of patent rights of Dysons products?

The outcome could be generic use of the term 'dyson' to describe a patent claimed to cover a product but not in fact doing so.

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