In this case (please see full details here), PulseOn OY was the owner of 2 RCDs protecting specific aspects of its wrist heart rate monitors such as the arrangement of LEDs and a photo sensor at the back. PulseOn OY alleged that Garmin (Europe) Limited had infringed these RCDs by importing and selling a number of models of smart watches incorporating its designs or designs not creating a different overall impression. The judge at first instance held that the 2 RCDs were both valid but neither of them were infringed.
PulseOn OY appealed on 4 permitted grounds, which were all dismissed by the CoA. The most interesting ones are grounds 1 and 3:
Ground 1: The design freedom in the location of the LED apertures on the watches was wider than what was decided by the judge at first instance, and therefore the scope of protection afforded by the RCDs was wider.
The CoA stated that 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. The judge at first instance might have stated the design freedom a little more narrowly then he should have done in relation to this particular feature. Nevertheless, it does not result in a wider scope of protection for these RCDs. Due to the existing “design corpus”, the informed user would only attach minimal weight to this feature when forming their overall impression.
Ground 3: Too much weight was attached to features such as the spacing between the different LEDs and the sensor, which were determined by technical considerations.
The CoA noted that the fact the informed user might understand or guess the reason for the particular spacing of the apertures does not mean that they would conclude that the spacing was deliberately chosen. The judge of first instance did not find the particular spacing within the design corpus, and was therefore entitled to more weight in the assessment exercise.
The result in this judgment is in alignment with previous court cases and reminds brand owners that a valid design in a highly technical product has a limited scope of protection, as small design differences may be enough to create a different overall impression. This is because the design freedom is dictated by the functions of the product and therefore, an informed user would pay less attention to features constrained by such functions when assessing the overall impression. This means that the similarities in the design of a technical product would need to be greater (than in the present case) to conclude that there is infringement.
We understand that the outcome of this case might not be welcome by some brand owners. However, it should not dissuade them from registering their designs. On the contrary, RCDs still form a key part of appropriate IPR protection strategies, and can act as a powerful tool against infringers for the following non-exhaustive reasons:
To know more about the best way to protect your designs and/or brands, please do not hesitate to contact us and we would be more than happy to assist.