ON APPEAL FROM THE HIGH COURT OF JUSTICE (CHANCERY DIVISION)
MR. JUSTICE ARNOLD
Strand, London, WC2A 2LL
B e f o r e :
LADY JUSTICE BLACK
SIR ROBIN JACOB
| DYSON LIMITED
|- and -
Mr. Iain Purvis QC and Ms. Anna Edwards-Stuart (instructed by EMW Law LLP) for the Respondent
Hearing dates : 26 July 2011
Crown Copyright ©
Sir Robin Jacob (giving the first judgment at the invitation of Jackson LJ):
The Statutory Provisions
The Registered Design
"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).
The Mach Zen
The Key Legal Question
 The most important things in a case about registered designs are:
(i) The registered design;
(ii) The accused object;
(ii) 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 Philips v Remington  RPC 283 at 318. And words themselves are often insufficiently precise on their own.
 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 Informed User
 In Case T-9/07 Grupo Promer Mon Graphic SA v Office for Harmonisation in the Internal Market  ECR II-0000 the General Court of the European Union held at :
"It must be found that the informed user is neither a manufacturer nor a seller of the products in which the designs at issue are intended to be incorporated or to which they are intended to be applied. The informed user is particularly observant and has some awareness of the state of the prior art, that is to say the previous designs relating to the product in question that had been disclosed on the date of filing of the contested design, or, as the case may be, on the date of priority claimed"
 In Case T-153/08 Shenzhen Taiden v Office for Harmonisation in the Internal Market  ECR II-0000 the General Court held:
"46. With regard to the interpretation of the concept of informed user, the status of 'user' implies that the person concerned uses the product in which the design is incorporated, in accordance with the purpose for which that product is intended.
47. The qualifier 'informed' suggests in addition that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them.
48. However, contrary to what the applicant claims, that factor does not imply that the informed user is able to distinguish, beyond the experience gained by using the product concerned, the aspects of the appearance of the product which are dictated by the product's technical function from those which are arbitrary."
Principles to be applied by the Court of Appeal
 There was no dispute as to these. It must be shown that the Judge has gone wrong in principle, see, e.g. Designers Guild v Russell Williams  FSR 113 where Lord Hoffmann said, speaking of the closely analogous question of substantiality in relation to copyright infringement:
"because the decision involves the application of a not altogether precise legal standard to a combination of features of varying importance, I think that this falls within the class of case in which an appellate court should not reverse a judge's decision unless he has erred in principle."
See also Assicurazioni v Arab Insurance  1 WLR 577.
The degree of design freedom
LADY JUSTICE BLACK: But a lot of what the judge was saying was a better or cheaper way of doing it as opposed to this was the only way of doing it? Is that your complaint?
MR. CARR: That is a part of our complaint. What the judge ends up by saying is that all designs are compromises and because this is a particularly good compromise that, I think, given a high specification, amounts to some kind of restriction on design freedom. If you go down that approach, you are going to penalise ingenious and innovative designs, which is what he has done.
LADY JUSTICE BLACK: The better your design the more people will say, "It is only going to be worse if I do it a different way".
MR. CARR: Precisely; the better your design, according to the judge, the less design freedom, and the narrower your protection, which also cannot be right.
(i) there is a technical reason for a 45o inclined bin ;
(ii) there is a technical reason for a transparent bin [68-70];
(ii) there is a technical reason why large wheels are used at the rear of the machine [72-75];
(iii) there is technical reason for having the wheels spaced apart as far as possible [[75-76];
(iv) there is a technical reason for wheel arches which are prominent and for the incorporation of buttons into these [76-79]
…if a new design is markedly different from anything that has gone before, it is likely to have a greater overall visual impact than if it is "surrounded by kindred prior art." (HHJ Fysh's pithy phrase in Woodhouse at ). It follows that the "overall impression" created by such a design will be more significant and the room for differences which do not create a substantially different overall impression is greater. So protection for a striking novel product will be correspondingly greater than for a product which is incrementally different from the prior art, though different enough to have its own individual character and thus be validly registered (P&G, [35(iii)], see also Recital 13 and Grupo Promer at  and ).
 Even on the basis that the Registered Design is entitled to a fairly broad scope of protection because of the differences between the Registered Design and the existing design corpus and because of the degree of freedom of the designer, in my judgment the overall impressions produced by the two designs are different.
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.
 In my view the informed user would notice that there were certain similarities between the two designs, in particular the inclined transparent bin, the large rear wheels and the curved longitudinal central handle. For the reasons given above, the informed user would not consider these similarities to be particularly significant. The informer user would also notice many differences between the respective designs, including features present in the Registered Design which are not present in the Mach Zen and vice versa. For the reasons explained above, the informed user would consider a number of these differences to be significant, particularly the rear view, the hose connector position, the bin handle, the wand handle, the cut-away feature and bumper of the Registered Design and the asymmetry of the Mach Zen. The overall impression produced by the Registered Design is smooth, curving and elegant. The overall impression produced by the Mach Zen is rugged, angular and industrial, even somewhat brutal.
Lord Justice Jackson :
"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  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 cross-examination still less substantial cross-examination."
Lady Justice Black: