Let’s Keep Watching….

February 28, 2019

Design Rights

We all know technology is constantly changing and evolving at a rapid speed. Currently, the latest craze is smartwatches (not sure for how long though!).

There are a number of ways we can protect Intellectual Property rights in technological products/ advancements. The most obvious being a patent. However, a topical case here is based on Registered Community Design rights for smartwatches. A registered design will give protection to the exterior appearance of a product. Such rights are clearly beneficial for products where its appearance is the selling point. In some cases, if the appearance shows a part of the technical function of the product, such as sensor, then registered design rights can protect this. Although, this form of protection for technical functions are limited.

PulseOn OY v Garmin (Europe) Limited [2019] EWCA Civ 138

PulseOn and Garmin are two high-tech corporations who have created numerous things over the years. In this case they have both designed and produced smartwatches. PulseOn hold two Registered Community Designs protecting the arrangement of LED’s/sensors for a heart rate monitor on their smartwatches. PulseOn claim that Garmin’s smartwatch infringes their registered designs by having an identical/similar arrangement of LED’s/sensors.

The High Court held that although PulseOn’s registered designs are valid, Garmin did not infringe the design registrations. The High Court judge concluded that these technical features are limited to protection of registered designs irrespective of shape or form. Therefore, ultimately concluded Garmin’s design of their smartwatch, due to the technical nature (which has limited design protection), did not infringe PulseOn’s design.

PulseOn appealed to the Court of Appeal (CA), appealing on 4 grounds. In relation to the first ground, the judge erred on the conclusion that design freedom was constrained. Secondly, the judge made an error in comparing the 3D model of Garmin’s product rather than Garmin’s actual product. Another ground made was that the judge attached too much weight to the technical features. The final ground of the appeal was that the judge explored Garmin’s product by identical impression, rather than whether it produced a different overall impression on an informed user.

The CA upheld the High Court judge’s decisions on all grounds; rejecting PulseOn’s appeal

Briffa’s Comments

Judgment from the High Court emphasises the point where registered designs that relate to highly functional or technical products are limited in terms of design freedom. This means technical features which are incorporated in designs will only provide small design differences when considering the overall impression on the informed user.

An informed user is taken to be aware of these design freedom constraints, thus less consideration is taken on the overall impression created by the design.

The case affirms that a greater degree of similarity is normally required to infringe the design of a highly functional or technical product, compared to a highly decorative/aesthetic product.

That being said, it’s a hard result for PulseOn to take and whether they appeal further is something we will be keeping our eye on.

Written by Hasnath Ahmed, Solicitor


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