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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Pulseon OY v Garmin (Europe) Ltd [2019] EWCA Civ 138 (13 February 2019) URL: http://www.bailii.org/ew/cases/EWCA/Civ/2019/138.html Cite as: [2019] ECDR 8, [2019] RPC 12, [2019] EWCA Civ 138, [2019] ECC 24 |
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Neutral Citation Number: [2019] EWCA Civ 138
Case No: A3/2018/0396
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
PATENTS COURT – SHORTER TRIALS SCHEME
Mr Roger Wyand QC sitting as a Deputy High Court Judge
[2018] EWHC 47 (Ch)
Royal Courts of Justice
Strand, London, WC2A 2LL
Date: 13/02/2019
Before:
LORD JUSTICE LEWISON
LORD JUSTICE MOYLAN
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Between:
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Appellant |
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GARMIN (EUROPE) LIMITED |
Respondent |
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James Mellor QC and Maxwell Keay (instructed by Kemp Little LLP ) for the Appellant
Hugo Cuddigan QC and Ben Longstaff (instructed by Powell Gilbert LLP ) for the Respondent
Hearing dates: 30-31 January 2019
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Approved Judgment
Lord Justice Floyd:
1. This appeal arises in an action for infringement of two Registered Community Designs (“RCDs”) depicting aspects of the design of heart rate monitoring devices which can be worn on the wrists of those with an interest in their cardiac performance. The RCDs are in the name of the appellant, PulseOn
Oy (“
PulseOn”).
PulseOn
alleges that the respondent, Garmin (Europe) Limited (“Garmin”) has infringed the RCDs by importing and selling a number of models of smart watch in which the registered designs, or designs which do not produce a different overall impression, are incorporated. The judge, Mr Roger Wyand QC sitting as a Deputy High Court Judge, found both RCDs to be valid, but neither of them to be infringed.
PulseOn
appeals with permission which I granted on 1 May 2018.
2. On the appeal, Mr James Mellor QC and Mr Maxwell Keay appeared for PulseOn.
Mr Hugo Cuddigan QC and Mr Ben Longstaff appeared for Garmin.
Wrist Heart Rate Monitors (“WHRMs”)
The RCDs in issue
The Garmin WHRMs complained of
10. PulseOn
alleges that a group of models of Garmin WHRM infringe RCD 4 and RCD 5, and a further group infringe RCD 5 alone. It is sufficient to explain the issues if I focus on the Garmin Forerunner 235, which is said to infringe both registered designs. It looks like this enlarged photograph:
The Regulation
13. I set out below the relevant parts of the Regulation:
Article 3
For the purposes of this Regulation:
(a) ‘design’ means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation…
Article 5
1. A design shall be considered to be new if no identical design has been made available to the public:
… (b) in the case of a registered Community design, before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority.
2. Designs shall be deemed to be identical if their features differ only in immaterial details.
Article 6
1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public:
…
(b) in the case of a registered Community design, before the date of filing the application for registration or, if a priority is claimed, the date of priority.
2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.
Article 8
1. A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function.
…
Article 10
1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.
2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.
16. The scope of protection is determined through the eyes of the informed user. The characteristics of the informed user have been considered in a number of cases, both in the Court of Justice and in our national courts. In Samsung v Apple [2012] EWCA Civ 1339; [2013] FSR 9 this court approved a summary by HHJ Birss QC sitting as a Deputy High Court Judge (as he then was) of the identity and attributes of the informed user:
“[33] The designs are assessed from the perspective of the informed user. The identity and attributes of the informed user have been discussed by the Court of Justice of the European Union in PepsiCo Inc v Grupo Promer Mon-Graphic SA (C-281/10 P) [2012] FSR 5 at paragraphs 53 to 59 and also in Grupo Promer v OHIM (T-9/07) [2010] ECDR 7 , (in the General Court from which PepsiCo was an appeal) and in Shenzhen Taiden v OHIM (T-153/08), judgment of 22 June 2010.
[34] Samsung submitted that the following summary characterises the informed user. I accept it and have added cross-references to the cases mentioned:
He (or she) is a user of the product in which the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller ( PepsiCo paragraph 54 referring to Grupo Promer paragraph 62; Shenzhen paragraph 46).
However, unlike the average consumer of trade mark law, he is particularly observant ( PepsiCo paragraph 53);
He has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned ( PepsiCo paragraph 59 and also paragraph 54 referring to Grupo Promer paragraph 62);
He is interested in the products concerned and shows a relatively high degree of attention when he uses them ( PepsiCo paragraph 59);
He conducts a direct comparison of the designs in issue unless there are specific circumstances or the devices have certain characteristics which make it impractical or uncommon to do so ( PepsiCo paragraph 55).
[35] I would add that the informed user neither (a) merely perceives the designs as a whole and does not analyse details, nor (b) observes in detail minimal differences which may exist ( PepsiCo paragraph 59).”
17. Articles 6(2) (validity) and 10(2) (scope of protection) mandate that the degree of freedom open to the designer is to be taken into consideration. The informed user is not impressed by similarities in features where there is little or no design freedom, for example because the feature is to some extent dictated by function. Jacob LJ put it in this way in Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936; [2008] FSR 8 at [29]:
“Another thing is also clear. Where shapes are, to some extent, required to be the way they are by reason of function, the informed user is taken to know that. That is what Art.6(2) (for validity) and Art.10(2) (for scope of protection) require. Take an aspect of this case. Both products have a trigger and something of a ‘‘pistol grip’’. There is some constraint on design freedom for this—the product must be grippable so that the index finger can pull the trigger, the trigger must be shaped to fit the finger and have sufficient space behind it for it to be pulled. That is a given. The informed user must take those requirements into account when assessing overall impression.”
“The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.’’
As has been pointed out (for example in paragraph 32 of Karen Millen Fashions, cited above at [14]) , “design corpus” is not a phrase used in any of the provisions of the Regulation and, as I have said, individual character is in fact to be assessed on a design by design basis. Nevertheless, it has been recognised that, in the assessment of overall impression, the informed user “has some awareness of the prior art”: Case T-9/07 Grupo Promer Mon Graphic SA v OHIM [2010] ECDR 7 at [72]. If the registered design is close to the existing design corpus for that type of article, the court will be astute not to afford too broad a degree of protection: see Procter & Gamble at [35(iii)].
“At one extreme will be a unique feature not in the prior art at all, at the other extreme will be a banal feature found in every example of the type. In between there will be features which are fairly common but are not ubiquitous or quite rare but not unheard of. These considerations go to the weight to be attached to the feature, always bearing in mind that the issue is all about what the items look like and that the appearance of features falling within a given descriptive phrase may vary.”
In this court, an attack was launched on what was said to be the judge’s piecemeal approach to overall impression based on analysis of each feature in isolation, stripped of its context. The Court of Appeal rejected that attack on that approach: see paragraphs 27-28, pointing out, nevertheless, that it is not legitimate to pick out features from the prior art and argue that one set of articles have one feature, another set of articles have a second feature, and a third set have a third feature and, by that process discount all the three features. If that were correct it would be impossible to protect a novel combination of features if they were all individually known from the prior art.
20. This is all consistent with what Kitchin LJ (as he then was) said in Magmatic v PMS International [2014] RPC 24; [2014] EWCA Civ 181, at [45]:
“I would add that the two designs must therefore be considered globally and, as one would expect, the informed user will attach less significance to those features which form part of the design corpus and correspondingly greater significance to those features which do not.”
22. Mr Mellor also submitted that it was only if features were “standardised”, in the sense that every design in the design corpus adopted them, that they could be treated as supporting the existence of limitations on design freedom. He sought to derive some support for this from the judgment of Arnold J in Whitby Specialist Vehicles Limited v Yorkshire Specialist Vehicles Limited [2014] EWHC 4242 (Pat); [2016] FSR 5 at [32] to [35], but I do not understand those paragraphs to support that proposition. Of course, one cannot, without more, infer a limitation on design freedom from the existence of a number of similar designs. That could simply be due to a design trend: Case (T-357/12) Sachi Premium-Outdoor Furniture Lda v OHIM EU:T:2014:55 at [23]. The court must assess all the evidence which touches on the designer’s degree of freedom and feed it into the overall assessment.
The judgment of Roger Wyand QC
i) The rear surfaces have an aperture for a photo sensor and further apertures for one or more LEDs;
ii) The photo sensor aperture is central and is generally of a rectangular shape, sometimes rounded;
iii) It is common for there to be two LED apertures, one either side of the photo sensor aperture, equidistant therefrom, the distance from the photo sensor being small. There may also be further LED apertures;
iv) The apertures are commonly within a raised platform, smaller than the back of the product;
v) The raised platform is commonly round.
i) The raised platform;
ii) The layout of the photo sensor and LED apertures in relation to two aspects:
a) The symmetrical disposition of the four apertures about the lateral axis of the device; and
b) The spacing of the apertures of the photo sensor and the central LED; and
iii) The shape of the apertures.
i) The number of LEDs (paragraph 47);
ii) All apertures must be of sufficient size, compared to the LEDs and the photo sensor, to allow them to function (paragraph 48);
iii) Where the system is designed to use green LEDs, the LEDs must be as close as possible to the photo sensor. A red LED can be further away. The judge continued in paragraph 49:
“A system designed for the use of two green LEDs and one red LED will have two apertures close to the central photo sensor aperture and one further away. Two LED apertures and the photo sensor aperture will be in a line, although there is no restriction as to whether the line is parallel or transverse (or at an angle to) the line of the strap. There is design freedom as to where the third LED aperture is located.”
iv) The judge then said this at paragraph 50:
“Where three green LEDs are used, all three apertures need to be placed close to the photo sensor aperture. There is little design freedom as to their placement since they will have to be on three of the four sides of the photo sensor aperture in a horseshoe arrangement. Again there is design freedom as to the orientation of the line through three of the the four apertures”.
v) The design freedom in relation to the raised platform was limited by the following: (i) the platform must fit within the footprint of the back of the device; (ii) it must not have sharp edges; (iii) where the device has charging points (which should be outside the raised platform) the size of the platform is correspondingly limited; (iv) the platform must encompass all the apertures. Subject to those factors, there was design freedom as to the outline of the platform and its height above the casing (paragraph 51).
32. The judge found the following differences between the design of the Forerunner 235 and RCD 4:
i) There were significant differences in the size and shape of the LED apertures;
ii) The photo sensor aperture of the Forerunner 235 design was curved at the top whereas, in RCD 4 it was flat;
iii) The placing of the photo sensor aperture in the Forerunner 235 was almost in the middle of the raised platform, whereas it was very close to the top in RCD 4;
iv) The line through the two LED apertures and the photo sensor runs through the centre of the raised platform, whereas it does not do so in RCD 4;
v) The three LED apertures in the Forerunner 235 are not as close to the edge of the platform as they are in RCD 4.
33. There were the following similarities between RCD 4 and the Forerunner 235 design:
i) The number of apertures;
ii) The fact that there are three apertures in a row with a fourth in the middle below;
iii) The three LED apertures are all the same shape as each other (but not between designs);
iv) The three LED apertures are all smaller than the photo sensor aperture;
v) The raised platforms are both circular and encompass all the apertures.
i) Significant differences in the size and shape of the LED apertures;
ii) The difference in the shape of the top of the photo sensor;
iii) The difference in the positioning of the photo sensor in relation to the backplate: in the accused designs it was almost in the middle whereas in RCD5 it was offset.
36. The relevant similarities were:
i) The number of apertures;
ii) The fact that there are three apertures in a row with a fourth in the middle below;
iii) The three LED apertures are all the same shape as each other (but not between designs);
iv) The three LED apertures are all smaller than the photo sensor aperture.
The grounds of appeal
39. PulseOn’s
grounds of appeal can be summarised as follows:
i) Ground 1: The judge was wrong to find that where three green LEDs are used in a WHRM there is little design freedom. The judge was wrong to say at [50] that the three LEDs would be placed on three of the four sides of the photo sensor in a horseshoe arrangement. He had failed to take into account the Wellograph Wellness Watch, which had three green LEDs in a different arrangement, and had failed to realise that his horseshoe arrangement was only required because of the size of the apertures chosen by the designer. The judge had also been wrong at [49] to say that, where two green LEDs and a red LED were used, two LEDs and a photo sensor will be in a line. Accordingly, the judge ought to have held that the two RCDs, given the wider design freedom, were entitled to a broad scope of protection.
ii) Ground 2: When considering the comparison between the RCDs and the Garmin products, the judge wrongly compared the RCDs to enlarged 3D models of the Garmin products. This gave rise to two errors: (i) certain models did not have the curve at the top; (ii) the enlarged models made slight differences appear more significant.
iii) Ground 3: The judge attached undue weight to features which were determined by technical considerations. The differences which the judge identified in the positioning of the line through the LEDs and the sensor in relation to the raised platform/backplate were determined by technical considerations.
iv) Ground 4: The judge, by asking himself whether the accused devices would produce an identical impression on the informed user, applied the wrong test for infringement.
i) In comparing the RCDs to the design corpus, the judge wrongly relied on a list of disembodied features rather than the designs themselves, taken individually. This error led him to conclude that the designer’s degree of freedom was more limited than it in fact was.
ii) The judge’s finding at paragraph 22(v) that the raised platform is commonly round was wrong and had no basis in the evidence. Only one device, the Apple watch, had a circular raised platform.
iii) The judge had wrongly limited his consideration of the design corpus to the pleaded devices, and wrongly took into account the Rolex Submariner watch contrary to his finding that the design corpus consisted of WHRM devices.
iv) In assessing the designer’s degree of freedom at paragraph 47 the judge failed to consider the whole of the design process. He wrongly took as a starting point that a 3 LED system had been selected. He should have held that there was a design freedom in making that selection.
43. I will take each of the original grounds in turn. It is convenient to start with ground 4.
Ground 4
47. As to the failure to use the word “overall” in paragraphs 66 and 69, the appellants have severed the cited paragraphs of the judgment from their context in the judgment as a whole. Thus, the judge summarised the allegations of infringement at [12] and [13] by saying that the accused products were products in which the design “ or a design which does not produce a different overall impression ” was incorporated. At [15] the judge summarised Garmin’s primary position as being that the RCDs were valid but that “ the products alleged to infringe produce a different overall impression ”. The judge then gave himself a correct direction as to the law at paragraph 17(vi) where he emphasised the need to assess the respective “ overall impressions ” of the RCD and the alleged infringing design. At paragraphs 28 and 29 he cited from HHJ Birss QC’s caution in Samsung v Apple that it was necessary in the end “ to pull it all together and consider the overall impression ” and he stated that he would bear this in mind when he considered “ the overall impression below ”. Indeed, at [52] he said “ I must (and do) bear in mind that it is the overall impression which counts, that is the visual appearance, not a verbalised list of features ”. When considering the RCDs in comparison with Basu at paragraph 62, the judge decided that “the proportions, shapes and relative sizes of the apertures are significantly different and produce a different overall impression ”, and that taking into account the differences in separation of the apertures “ the overall impressions are even more different”. Then, at paragraph 64, when introducing the issue of infringement in relation to the group of devices alleged to infringe RCD 4, the judge identified PulseOn’s
allegation as being that the accused devices were “products in which the design, or a design which does not produce a different overall impression ” were incorporated. Having identified “significant” differences, in relation to that group, the judge repeats this formulation at paragraph 67 when dealing with the group of devices alleged to infringe RCD 5. He again identifies “significant differences” at paragraph 68. Finally, when considering a further group at paragraph 73 and following he says at paragraph 77 that “none of these products produce on the informed user the same overall impression ”.
“The court must identify the “overall impression” of the registered design with care. True it is that it is difficult to put into language, and it is helpful to use pictures as part of the identification, but the exercise must be done”.
50. I do not think there is anything in this criticism. The judge made his assessment of the overall impression clear by the use of the pictures with which he was supplied, and by considering and giving appropriate weight to the similarities and differences when he came to compare the alleged infringement. I do not think he went wrong in principle by adopting this approach (compare the approach of Arnold J in Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd [2104] EWHC 4242 (Pat); [2016] FSR 5 at [39]).
51. I would therefore reject ground 4.
Ground 1
53. The Omron looks like this:
59. I would therefore reject ground 1 of the grounds of appeal.
Ground 2
60. PulseOn
submitted, at least in their skeleton argument, that when considering the issue of infringement the judge had wrongly compared the RCDs to the significantly enlarged 3D models of the Garmin products. They submitted that the comparison should be made, save where it is impractical or unrealistic, with the actual article as it would be perceived by the informed user. In the present case the failure to make a direct comparison had resulted in two errors. First, the comparison with the Garmin models had the effect of exaggerating the perceived differences, which are scarcely noticeable when the correct comparison is carried out. Secondly, the comparison with the model had led the judge to the erroneous conclusion that all the products now complained of had an arched upper edge to the photo sensor aperture, when this was not the case. In fact, the Fenix 3HR and Fenix Chronos did not have the arched upper edge, and the upper edge appeared to be flat, even if the arch was present.
61. Mr Cuddigan submitted that the present case presented difficulties of comparison and assessment because the features of the design, when reproduced in physical products, were particularly small. The difficulty was compounded because, in the physical products, visual assessment tends to reveal what is behind the apertures rather than the apertures themselves. The judge was therefore justified in using the models. Alternatively, if the court is to be guided by the appearance to the naked eye, then it must apply that approach consistently to all the features. If that was done then the curved edges on the LEDs as they appeared in the model should also be treated as flat. PulseOn
should not be entitled to rely on only selected features in the direct comparison.
62. In Case C-281/10P Pepsico v Grupo Promer , [2012] FSR 5 at [55], the Court of Justice explained the need for a direct comparison in these terms:
“…as the Advocate General observed in points 51 and 52 of his Opinion, it is true that the very nature of the informed user as defined above means that, when possible, he will make a direct comparison between the designs at issue. However, it cannot be ruled out that such a comparison may be impracticable or uncommon in the sector concerned, in particular because of specific circumstances or the characteristics of the devices which the designs at issue represent.”
64. There was a degree of selectivity in PulseOn’s
case on this issue.
PulseOn
rely on some quite detailed features of the Garmin products as giving rise to similarities of impression. One example is the radiussing of the corners of the rectangular photo sensor aperture. That radiussing is, however, very difficult to see without enlargement. It is not legitimate to rely on difficult-to-see similarities but to ignore difficult-to-see differences.
65. I would therefore reject ground 2 of the grounds of appeal.
Ground 3
67. I think the difficulty with PulseOn’s
argument is that there is no basis for ignoring the separation of the third LED altogether, or saying that the separation plays no part in the overall impression created by the RCD. The fact that the informed user might understand or guess why the designer had used a different spacing does not mean that he does not think that the spacing was deliberately chosen. A similar point arose in Samsung v Apple , where Apple argued that the informed user would understand that the thickness of tablet computers was likely to decrease as technology advanced, so that the informed user would pay less attention to reduced thickness between the design and the infringement. Sir Robin Jacob rejected this argument at [14]:
“First is that the scope of protection is for the design as registered, not some future, even if foreseeable, variant. Secondly is that Apple’s point cuts both ways: if the informed user could foresee thinner tablets ere long so could Apple whom the informed user would take to have the same prevision. Thus the informed user would take the thickness to be a deliberate design choice by Apple.”
68. So also here. The RCDs are for the design as registered, not for the design varied so as to accommodate three green LEDs. If the informed user got as far as deducing what the reason for the spacing was, he would assume that this was a design for two greens and a red, and a deliberate design choice by PulseOn.
70. I would therefore reject ground 3.
Overall impression in the present case.
71. I have rejected each of PulseOn’s
individual complaints about the judgment, and so it follows that this court has no basis for interfering with the trial judge’s assessment that the RCDs and the accused devices created different overall impressions on the informed user. Even if we were entitled to embark on a re-assessment, however, I am a very long way from being persuaded that the judge’s evaluation was in error.
“For RCD4, the overall impression of the design comprises three rounded, elongate LED apertures, two of which are positioned above and below a larger rectangular photo sensor aperture with radiussed corners with their long axes parallel to the wearer’s wrist and perpendicular to the watch strap. The third LED aperture is positioned to the left of the sensor aperture with its long axis perpendicular to the long axes of the other two LED apertures, such that the LED apertures are arranged in a squared off C shape around the larger photo sensor aperture, with the arrangement of the apertures enclosed on a raised circular platform.”
74. To my mind the features which are omitted from PulseOn’s
characterisation are more than sufficient to create a different impression from the accused devices. In those devices the ends of the LED apertures are shallow arcuate shapes, and meet the sides in a sharp discontinuity. The LED apertures are obviously much larger relative to the photo sensor aperture than in the RCDs. There is nothing of the open feel of the RCDs, all the LEDs being at the same distance from their adjacent rectangular edge, creating something much closer to a C shape.
75. Mr Cuddigan drew attention to what he said was a contradiction in PulseOn’s
case. In advancing its argument on the spacing between the third LED,
PulseOn
was cautious to make clear that its submission was not that the spacing should be ignored in its entirety. Rather, it should be given less weight in the overall impression. Indeed, the judge had taken it into account in
PulseOn’s
favour, rather than ignored it entirely, when considering the validity of the design over Basu. Moreover there was no example in the design corpus of a design with three LEDs and this type of offset spacing for the third LED. Yet, when it comes to characterising the overall impression,
PulseOn
ignores this feature of the design altogether, when, on the judge’s findings and
PulseOn’s concessions, it ought to have been included. He described this as a short-cut to the correct answer to the appeal. Whilst short-cuts can be dangerous, I would have regarded this as confirmation of the view that the Garmin products, which do not share this feature, indeed create a different overall impression.
Lord Justice Moylan:
Lord Justice Lewison: