Another RCD unfit for appeal

The English Court of Appeal recently issued its judgment in PulseOn Oy v Garmin (Europe) Limited [2019] EWCA Civ 138. This case joins the relatively small number of Court of Appeal decisions on the infringement of Registered Community Designs (RCDs). The field of the design has varied in each case, but the result has been the same: the design was valid, but not infringed.

PulseOn (a spin-off from Nokia) and Garmin both make wrist heart rate monitors (WHRMs). The global market for WHRMs is forecast to grow by 13.5% per year (compound) over the next five years [presumably in places other than London - there are only so many WHRMs that a person can wear at any one time]. WHRMs have one or more LEDs on the underside of the device that emit light (typically green or red light) onto the skin of the wearer. The amount of light that reaches the photosensor is affected by changes in tissue volume caused by pulsating blood flow. [This technique is more correctly called photoplethysmography (PPG) - almost as difficult to say as it presumably is to achieve in practice].

FitnessKat could not be any more ready for this

PulseOn alleged that two of the RCDs for its WHRMs were infringed by various Garmin devices, including the Forerunner 235. The first design (comprising two representations of the device from different angles, shown above) is for the layout of a central conical raised platform on the underside of the device (to sit as close as possible to the wearer’s skin), with a particular layout of apertures. The parties agreed that the informed user would interpret the central aperture as being for a photosensor, and the three smaller apertures for LEDs. As is common practice, other visual features were disclaimed using the dotted line method recognised by the EUIPO Guidelines. The second design was identical to the first, except the raised platform is also visually disclaimed i.e. the design focuses on the apertures. [The words “technical” and “function” will no doubt have occurred to readers, but the trial judge held that although the raised platform and shape and layout of the apertures would fulfil a technical purpose, these design choices were not devoid of aesthetic considerations].

At first instance, Roger Wyand QC (sitting as a Deputy High Court Judge) found that both of the RCDs were valid, but not infringed. PulseOn originally appealed on four grounds, but attempted to add four further grounds of appeal orally at the appeal hearing. A bold, but fruitless, move - the Court of Appeal pointed out that this would have caused significant prejudice to Garmin. [Interestingly, the CoA seemed to leave open the possibility that PulseOn could have run these new grounds if it had given just a few days notice, so it will not necessarily be the case that an appellant will be held strictly to the grounds on which it first sought permission to appeal].

The Court of Appeal dismissed all four permitted grounds of appeal:

• At two places in his judgment the trial judge determined that the relevant designs did not produce an “identical impression” i.e. not the wording of “different overall impression” found in Article 10(1) of the Design Regulation. This argument was potentially important because other grounds of appeal suggested (at least impliedly) that the trial judge had focused unduly on particular features of the designs, and did not consider the overall impression given by the designs. The Court of Appeal seemed to agree with Garmin’s argument that “identical” is an antonym of different, and therefore dismissed this ground.

• The trial judge found that design freedom regarding the location of the LED apertures is constrained: where three green LEDs are used, they must be equidistant from the photosensor in a “horseshoe” arrangement; where two green and one red are used, two apertures will be close to and in a line with the photosensor, and one further away. PulseOn argued that the judge had failed to take account of two designs (which formed part of the design corpus) with arrangements of LED apertures that did not conform to the judge’s findings. The Court of Appeal did not have much time for Garmin’s argument that the aperture layout shown by the RCDs is optimal for a two green, one red LED setup (and the other layouts would not be optimal). The informed user is not taken to be an expert engineer, and will not be aware of all the engineering considerations pertinent to a particular design. Garmin’s argument would (undesirably) open the door to significant extra evidence in every registered design case. The CoA appeared to accept that the judge had stated the degree of freedom too narrowly in relation to this feature, but decided that this did not affect the outcome. The design corpus was replete with designs in which two LED apertures were placed on either side of the photosensor; at the very least, the informed user would attach little weight to this feature in forming their overall impression.

Garmin layout on the left; RCD layout on the right

• The judge had compared the RCDs to enlarged 3D models of the Garmin products. PulseOn said this caused two errors: (i) the exaggeration of perceived differences; and (ii) the judge was erroneously led to believe that all the relevant Garmin products had a particular feature, when in fact they did not. In Pepsico v Grupo Promer, the CJEU underlined that a direct comparison between RCD and the actual infringing article is the default, but acknowledged that on occasion this might be impractical. The Court of Appeal held that this was one such occasion: the Garmin products are small and difficult to inspect, and the eye is drawn to what is behind an aperture rather than the aperture itself. PulseOn was also trying to have its cake and eat it by relying on similarities between certain features that are only really visible on an enlarged model.

• PulseOn argued that the judge had attached undue weight to differences between the RCD and the Garmin products that were in fact determined by technical considerations, namely: due to the longer wavelength of the light emitted, a red LED will be placed further from the photosensor than a green LED. The Court of Appeal noted that the fact the informed user might guess the reason for the particular spacing of the apertures does not mean that they would conclude that the spacing was not a deliberate design choice. The particular spacing shown in the RCD was not found in the design corpus, reinforcing the suggestion that the spacing in question was deliberately chosen by PulseOn for non-technical reasons.

Comment

This judgment is unlikely to soothe the concerns of those practitioners and RCD owners that believe it is too difficult to enforce RCDs in the UK. PulseOn's design shared the fate of those in PMS v Magmatic, Samsung v Apple and P&G v RB: valid, but not infringed.

Is it still worth bothering to register designs? Undoubtedly, yes, even from a narrow UK perspective. The trade-off between cost/delay (small) and potential utility as - at minimum - a bargaining chip in settlement negotiations, can usually be answered in favour of registration. Certainly, RCDs can be invaluable for highly aesthetic products, where the degree of design freedom might be greater. But where the design freedom is highly constrained by technical considerations, RCD owners will struggle in many cases. In this case, a few relatively minor tweaks (longer LED apertures with "edgier" edges and closer positioning to the photosensor aperture) were more than enough to create a different overall impression. The informed user, ultimately, seems to care more about how a product looks than why it might look that way (at least if other design options are available).

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