Brent Randall is a JD candidate at the University of Ottawa.

It is a seemingly lofty goal for a court: keep legal reasoning simple.  As anyone who has a read a court’s decision knows, that is easier said than done, either because a judge wants to make sure all relevant issues are dealt with thoroughly, or because the interplay between the facts and statutes involved is complicated.  The Court of Appeal of England and Wales attempted to achieve this simplicity in regards to registered designs in its October 27, 2011, decision in Dyson Ltd. v. Vax Ltd.

The plaintiff, Dyson, is a world-famous British technology company that rose to fame for its innovative vacuum cleaners, but also offers products such as washing machines, hand dryers and fans.  The defendant, Vax, calls itself “the UK’s best selling floorcare brand”, offering vacuums, carpet cleaners, and hard wood floor cleaners of many varieties.

One Dyson product, the DC02, is referred to as “the world’s first bagless cylinder vacuum”.  Vax released a product called the Mach Zen C-91 MZ vacuum cleaner, which also prides itself on its cylinder technology.  Dyson argued to the English High Court that its registered design in the DC02 had been infringed by Vax’s Mach Zen.  The High Court found that there was no infringement.

The clear-cut issue that the Court of Appeal was faced with was whether “the Mach Zen ‘does not produce on the informed user a different overall impression’”.  The framing of the issue in this way reflects, verbatim, the scope of protection for registered designs set out in Article 9(1) of the Designs Directive 98/71.  This Directive is regarded as a substantial complement to the UK’s Registered Designs Act 1949.  Sir Robin Jacob (a member of IP Osgoode’s International Advisory Council) penned the decision of the court. He stated that trying to ascertain the “overall impression” of a design should be simple: it is what can be seen with your eyes.  The 2007 High Court decision of Procter & Gamble v. Reckitt Benckiser (a case which Sir Robin also decided), set out the most important things in a registered designs case:

1. the registered design;
2. the accused object;
3. the prior art.

However, even with these three guiding factors, Sir Robin stated in the Proctor & Gamble case that the most important thing about each of them, to the court, is what they look like.  So confident in how simple a registered designs case should be, Sir Robin stated in Procter & Gamble that a decision should be able to be rendered in only a few hours, since there is little need for evidence other than the two designs in question.

On the same note, Sir Robin stated that any expert evidence should be sought only for very precise and clear purposes, since the scope of protection refers to informed users, not anyone with highly technical expertise related to the designs.  The concern is that “left to their own devices experts all too often address questions of their own choosing.”  This statement also clearly goes hand-in-hand with the desire to keep registered design cases simple.

This goal of simplicity is quite similar to the way that courts deal with trade-marks.  For example, in the recent Supreme Court of Canada decision of Masterpiece Inc. v. Alavida Lifestyles Inc., Rothstein J. (a member of IP Osgoode’s Advisory Board) made a similar statement regarding expert evidence when he said that:

In a case such as this, where the “casual consumer” is not expected to be particularly skilled or knowledgeable, and there is a resemblance between the marks, expert evidence which simply assesses that resemblance will not generally be necessary.  And it will be positively unhelpful if the expert engages in an analysis that distracts from the hypothetical question of likelihood of confusion at the centre of the analysis.

The Masterpiece decision, and indeed any trade-mark confusion case, has a clear similarity to a registered design case, as both depend on objective tests for establishing what impression the product would have on a fictional consumer or user.  The legal fiction in Masterpiece is the “casual consumer somewhat in a hurry” while Dyson deals with an “informed user” as per the Designs Directive 98/71.

There seems to be a flaw in Sir Robin’s steps toward achieving simplicity in registered design cases.  The concept of an “informed user” sounds simple enough, but when the characteristics of this user are set out, it seems less simple.  In Dyson and the cases it quotes, the informed user is described as a person who is:

Neither a manufacturer nor a seller of the products…particularly observant and has some awareness of the state of the prior art…uses the product in which the design is incorporated, in accordance with the purpose for which that product is intended…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…shows a relatively high degree of attention when he uses them…and reasonably discriminatory [but not] 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.

Clearly, there are a lot of considerations that go into what makes up the “informed user”.  Sir Robin considered the two designs and was satisfied that there were enough to distinguish Vax’s design from Dyson’s and, therefore, found no infringement of Dyson’s vacuum.

Posted in Canada, Design, Jurisdiction, Supreme Court of Canada, Trademarks, UK