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PulseOn v Garmin, did the High Court correctly apply the test for infringement of Registered Community Designs?

Published on 08 April 2019

PulseOn (a developer of heart rate monitor wrist watches) alleged infringement of its Registered Community Design (RCD) for those watches by one of Garmin’s sports watches, the “Forerunner 235”. PulseOn’s RCD sought to protect specific design features of the watch – in particular the shape and arrangement of three oblong LED sensors around a rectangular photo sensor.

The background

Under EU design law, PulseOn’s RCD allows it to prevent third parties (including Garmin) from using any design which does not create a “different overall impression” on the informed user.  When considering the overall impression of the designs, the informed user will consider the degree of design freedom involved in the design and will place less weight on aspects where there is little or no design freedom (eg due to technical constraints).

In conducting that overall assessment, the High Court concluded that, whilst there was limited design freedom in relation to the placement of the LEDs and sensor (which needed to be placed in such a way so as to detect a person’s heart rate), on the balance of the similarities and differences between the respective designs, Garmin’s Forerunner design did not infringe PulseOn’s RCD.

The decision

PulseOn appealed the High Court’s decision on four grounds.  The first ground was that the design freedom in the watches was actually wider than the judge stated.  As result, PulseOn alleged that its RCDs should have been afforded a wider scope of protection.  However, the Court of Appeal found that, whilst the judge may have stated the design freedom more narrowly than he should have (in relation to one particular feature) this did not result in a significantly wider scope of protection for PulseOn’s RCD.  The judge’s conclusion that there was limited design freedom was materially correct.

PulseOn’s second ground of appeal was that the judge should not have compared PulseOn’s RCDs to enlarged 3D models of Garmin’s Forerunner 235 watch (but should have used the actual Garmin product).  The enlarged models exaggerated the differences between the designs.  On this ground, the Court of Appeal found that usually a RCD should be compared to the allegedly infringing product itself.  However, in this case the design in the product was so small that it made the comparison difficult.  The judge was therefore justified in using the enlarged 3D models instead.

PulseOn’s appeal was based on the third ground that the judge attached undue weight to features which were determined by technical considerations (ie the spacing between the different LEDs and the sensor).  The Court of Appeal stated that the judge must have been aware of the reason for the differential spacing and the weight to be given to this in his overall evaluation was a matter for him.  It had to be balanced against the fact that the spacing was not amongst the features found, either commonly or at all, in the design corpus, and was therefore entitled to more weight in the assessment.

The fourth ground of PulseOn’s appeal was that the judge applied the wrong test for infringement of a RCD by asking himself whether the designs produced an “identical impression”.  The Court of Appeal found that the correct test for infringement is whether the designs create a “different overall impression”.  By saying that the designs did not create an identical impression, the judge was deciding that they were different.  Whilst he may have used incorrect language, it was clear that he applied the correct test throughout his assessment.

 Why is this important?

The decision confirms a number of key principles of European registered design law – both the correct test for infringement of RCDs and also the impact that the degree of design freedom can have on the overall impression of the designs.

 Any practical tips

In highly technical products (where design freedom is limited) smaller design differences are likely to be required for a design to create a “different overall impression” on the informed user.  This is because the informed user will be taken to know, and will attach less weight to, the features of a design for which the designer has a limited degree of design freedom.  As a result, technical designs and products will need to be more similar to each other for there to be an infringement than purely aesthetic designs where there is more potential for creative endeavour.