Registered design disputes do not frequently reach the court room so when it does, it’s worth a read. Chiaro Technology Limited, more frequently known as the designer of the popular Elvie hands-free electric breast pump, is the owner of three UK registered designs and sought to injunct Mayborn (UK) Ltd, otherwise known as the company behind Tommee Tippee, and its new Made for Me wearable breast pump. Products such as these are indispensable for breastfeeding mothers to allow pumping on the go and facilitate bottle feeding of breastmilk to infants. Infringement was asserted under section 7(1) of the Registered Designs Act 1949 (RDA).
At first glance, both pumps have a similar look and feel and provide the same ultimate function. However the analysis for design infringement is a comparison of the registered designs against the infringing product, and whether the latter “produces on the informed user a different overall impression”. The assessment has to be carefully conducted to take account of any exclusions to the registered design – in this case, a number of features were deemed to be solely dictated by the product’s technical function and therefore could not be protected by a registered design right (section 1C(1) RDA). This aspect of the case provides an interesting intersectionality with patents; Chiaro owned various patents for its breast pump which are meant to deal with technical matters, not design matters. It was argued that if a feature appeared in Chiaro’s patent and also in the functional design then it is a good indication that the feature is functional. In practice the analysis is slightly more nuanced but the Judge agreed that Chiaro’s patents amounted to objective evidence of the functional qualities of what they describe.
The Judge systematically considered Chiaro’s three registered designs and whether each design aspect was excluded due to its technical function. When doing so, the existing design corpus must be analysed to understand what other products are in the market and hence what level of design freedom a designer may have after taking into account technical restraints. The greater the designer’s freedom in developing a design, the less likely it is that even minor differences between the design will be sufficient to form a different overall impression. Features such as the ovoid anterior face of the pump, the shape of the inner breast shield and the shape and flat bottom of the milk collection bottle were all features dictated by technical function of the product – i.e. dictated by the location and positioning of the pump, the shape of a woman’s breast, gravity to assist pumping, and the need for the milk bottle to be transparent and sit on a flat surface without toppling over.
Once technical design features were excluded, a comparison as to “overall impression on the informed user” was made between Chiaro’s registered designs (not the Elvie product which the designs are incorporated into) and Tommee Tippee’s pump. The construct of an “informed user” is somewhere between a skilled addressee (patents) and the average consumer (trade marks) and “will have a relatively high level of attention to detail” and be familiar with the product in question. In conducting the comparison, the Judge found that Tommee Tippee’s pump does form a different overall impression due to its inter alia, tear drop shape, the location of buttons, the charging port, the size of the release button on the front, the hole in which the nipple shield sits and the shoulders of the milk collection bottle. Compared with other pumps in the design corpus, the Tommee Tippee pump was not like others and created a different overall impression on the informed user, so all three Chiaro designs were not infringed (invalidity was not at issue).
This case provides a helpful reminder on relevant design rights case law and judicial analysis and interpretation of it. It reminds us that technical functionality can be a difficult exclusion to overcome, even if a designer has a number of aesthetic choices they can make. For designers, it is helpful to obtain registered designs for multiple parts of a product and think carefully about which features to exclude (by the use of dotted lines in the drawing). And for claimants, to best assist the court it’s most helpful to provide pictures of the relevant products taken at the same angle as the design drawings to assist with the overall comparison.
78. That being the case, one has to ask where one starts in considering what technical requirements are involved, and the only sensible answer to that is with the design. If design freedom is to be limited by technical function, then one has to identify the technical function. In order to identify it one has to find it, and the only place one can find it is in the design. There is no point in considering technical function which does not appear in the design even if it appears elsewhere in the design corpus. So one has to start with the design, not the design corpus, in ascertaining what technical function one is considering.
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