Pulseon Oy v Garmin (Europe) Ltd

Hearing dates: 30–31 January 2019

Approved Judgment

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.

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”)

WHRMs operate by using light to measure changes in tissue volume caused by pulsing blood flow. One or more light sources (in practice LEDs) are placed against the skin of the wrist in sufficient proximity to a photo detector or sensor which is also so placed. The amount of light which reaches the detector is affected by the small changes in tissue volume caused by the pulsating blood flow. The consequent variations in the light signal can be processed to deduce a heart rate.

A fact which is relevant to the design of a WHRM is that different colour LEDs need to be placed closer or further away from the photo sensor, because of the difference in the wavelength of the emitted light.

The RCDs in issue

The two RCDS in issue are Nos 002473769-0004 and 002473769-0005 referred to as “RCD 4” and “RCD 5” respectively. Both the RCDs specify that the products to which they are to be applied are “physical activity meters”. Each RCD has one plan and one isometric representation showing the rear or backplate of a WHRM, absent the strap to attach it to the user's wrist. The representations in RCD 4 are reproduced below:

The RCDs adopt the convention, recognised by the Guidelines for Examination of Registered Community Designs published by the EU Intellectual Property Office (“the Guidelines”), that features for which protection is not claimed are shown in dotted lines. The Guidelines refer to this notation as the use of a “visual disclaimer”. There is a dispute about whether protection is claimed for the small Torx screws which secure the bar to which the wristband is attached, or whether the screws are intended to be excluded by visual disclaimer. The judge held that they were excluded, essentially as an obvious mistake, but Garmin challenge that conclusion in their respondent's notice. For present purposes I will assume, without deciding, that the judge was correct on that point, and that the Torx screws are not part of the designs.

RCD 5 is identical to RCD 4 except that the circular raised portion in the middle of the backplate is shown in dotted lines and thus does not form part of the design.

It will be seen that the RCDs have three identically shaped, round ended oblong features, disposed around a larger rectangular feature. In the case of RCD 4 these features are surrounded by two concentric circles. It is common ground that the informed user would interpret the three oblong features as LED apertures. Two of these LED apertures are placed along two opposite sides of the central, rectangular aperture, which would be interpreted as a photo sensor aperture. The third LED aperture is spaced further apart, perpendicular to the first two, but parallel to a third side of the photo sensor aperture. I call this the third LED aperture. The two concentric circles would be interpreted as a circular raised platform of shallow frusto-conical shape, which has the function of maintaining the LEDs and the photo sensor in close contact with the wearer's skin.

It might be thought odd that so much effort should go in to the protection of the design of the back of a WHRM, which is a part which is not visible in normal use. However, the back is normally visible when the WHRM is sold, and when it is taken on and off. The relevant legislation (to which I will come) only requires the features of the design to be “visible”, and, for at least some of the time, the features of the back are visible. The appearance of the back also features in some of the parties' marketing materials, albeit when emphasising the technical features of the watch.

The Garmin WHRMs complained of

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 features concerned are not the LEDs themselves, but the apertures within which they appear, which can (just) be seen surrounding the LEDs in the photograph. As I shall explain, the judge relied on a model with which he was supplied which showed these apertures much more clearly (see below). In the photograph, the central photo sensor aperture can (again, just) be seen to have an arched top, which was reproduced in the model given to the judge. The judge assumed that all the Garmin models complained of had this feature, whereas it transpired that this was not true of two of the models. Those had a straight top, making the photo sensor aperture a rectangle, with radiused corners.

The Regulation

RCDs are governed by Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs (“the Regulation”). To qualify for registration, the Regulation requires that the design must satisfy the twin requirements of novelty and “individual character”.

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.

A design which has novelty under Article 5, because its features differ from an existing design in details which are not “immaterial”, may nevertheless fail for lack of individual character under Article 6. To have individual character the design must create a different overall impression on the informed user from that produced by any existing, prior published design. The comparison must be with the overall impression of each design relied on from the prior art “considered individually”, and not by “a combination of features taken in isolation and drawn from a number of earlier designs”: see Case C-345/13 Karen Millen Fashions Ltd v Dunnes Stores [2016] ECDR 13 at [23] – [35].

The provisions relating to validity dovetail with those relating to the scope of protection and thus infringement. The scope of protection includes all designs which create the same overall impression as the registered design (or, as the Regulation prefers to put it in Article 10, designs which do not produce a different overall impression). Thus, the overall impression created by the registered design is used to determine both infringement and validity. As with other areas of intellectual property law, such as patents, it is important to apply a consistent approach when determining infringement and validity. Whilst the two issues are distinct, the overall impression created by the design deployed in determining each issue must be the same.

The scope of protection is determined through the eyes of the informed user. The characteristics of the informed user have been...