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British Courts Not Supporting British Design

Date: December 7th
Author: Kate Metcalfe

(Dyson Ltd v Vax Ltd – 2011)

“What really matters is what the court can see with its own eyes”

- Sir Robin Jacob , Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206, 27 October 2011

The Court of Appeal has upheld an earlier High Court decision in Dyson v Vax. It agreed that Vax had not infringed Dyson’s intellectual property by designing and producing the Mach Zen vacuum cleaner. Although it looked quite similar the court concluded that it “produced a different overall impression on the informed user” (this being the test for infringement) and was therefore not in breach.

Why is this decision important? Like all registered design owners Dyson has the exclusive right to use its registered design for a maximum of 25 years following registration. Dyson registered the design in 1994 so had thought that no competitors would be able to make a similar looking and functioning vacuum cleaner until at least 2019. What this decision has shown, however, is that simply registering the overall design of a product is no longer enough. Such a broad registration will not give sufficient protection to those aspects of a product that really do require safeguarding.   Although the products were clearly similar in function and design the court concluded that “what really matters is what the court can see with its own eyes”, and in this instance it saw too many differences.  Overall, the appeal judges characterized 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”. This, it concluded, gave a “different overall impression on the informed user”.

Myers Lister Price Corporate and Commercial Department: Intellectual Property, offer a full registered design service, from advising on the strengths of a registered design application, through the registration itself and onto protection of the design and enforcement of the intellectual property rights. As we have learnt from the Dyson case, simply registering an overall design of a product may no longer be enough to protect the product from being copied. We would advise our clients (as the UK and EU laws allow) to not only protect the design of a whole product but to also consider protecting specific parts of a product. Our experienced intellectual property team are on hand to advise what aspects of a design may be worth protecting and how this can best be done for you.

If you have any intellectual property enquiries please get in touch with Stephen Attree or Awena Parry, our Intellectual Property Solicitors at Myers Lister Price Solicitors on 0845 0738 445 or email info@mlpsolicitors.co.uk



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