In Dyson v Vax Ltd [2011] EWCA Civ 1206, Dyson Ltd has lost its appeal against Mr Justice Arnold’s decision that Vax Ltd had not infringed Dyson’s UK registered design in relation to its Dual Cyclone vacuum cleaner by importing and marketing the Mach Zen C-91 MZ vacuum cleaner.

BACKGROUND

In December 1994, Dyson applied for a UK registered design relating to the design of a dual cyclone cleaner. In 2009 Vax launched its Mach Zen vacuum cleaner, which, like the Dyson, was a multi-stage cyclone vacuum cleaner. Dyson issued proceedings against Vax claiming that the importing and marketing of the Mach Zen infringed its registered design.

Arnold J, at first instance, concluded that the overall impression produced by the two designs was different. In doing so he examined, in detail, the design corpus, which he said was “cylinder vacuum cleaners”, the degree of freedom of the designer, and the similarities and differences between the registered design and Vax’s machine. Whilst it was proper to consider both similarities and differences between the respective vacuum cleaners, what mattered, he said, was the overall impression produced on the informed user by each design having regard to the design corpus and the degree of freedom of the designer.

DECISION

The key question on appeal was whether the Mach Zen produced on the informed user a different overall impression from that of Dyson’s registered design. In the judgment of the Court of Appeal,  Jacob LJ noted that there was no dispute that Dyson’s registered design was “a great departure” from what had gone before. Further, there was no dispute as to the characteristics of the informed user who, importantly, was reasonably discriminatory and not the same person as the average consumer in trade mark law.

As to the degree of design freedom, this was found to plainly refer to the degree of freedom of the designer of the registered design, not the degree of freedom of the designer of the alleged infringement.  However, Jacob LJ found that there will seldom be any difference unless there has been a significant advance in technology between the date of creation of the registered design and the date of creation of the alleged infringement. Whilst Jacob LJ accepted that Arnold J should, technically, have focused only on the degree of design freedom of the registered design, it did not make any difference in this appeal as there was no evidence of any change in degrees of design freedom between the date of the design and the date of the Mach Zen. Therefore, Arnold J had not erred.

Jacob LJ also agreed with Vax’s arguments that there were substantial differences between the designs. On the basis of these differences, Arnold J was entitled to conclude that the Mach Zen produced on the informed user a different overall impression.

COMMENT

This judgment is of interest not only as a clear guide to the assessment of an alleged infringement of a registered design, but also as a general commentary on the role of expert evidence in such cases. Both Jacob LJ and Jackson LJ pointed to the need to restrict the ambit and focus of expert evidence. Anticipated amendments to CPR Part 35 during the course of the next year are thought likely to address this.