New rules for a cleaner fight

It’s busy in the High Court these days. The place must be crowded with designers. In one test case last week, the court upheld the ruling of the Advertising Standards Authority over the on-pack claims of the children’s drink Ribena Toothkind. But top of the bill was the rematch of Dyson versus Hoover. Even though both parties claimed a final victory it became prime-time viewing, and the aftermath has serious implications for designers.

In ruling against Hoover, the judge referred to a precedent from 1834. While not, therefore, strictly setting a legal precedent as Dyson claimed last week, “it’s effectively a precedent” because it is the first time in recent history an invention has been recognised in this way, explains Graeme Fearon, solicitor at intellectual property lawyer Bird & Bird.

In an earlier case, Dyson managed to convince the court of copyright infringement of its bagless Dual Cyclone vacuum cleaner system. As a result, Hoover was forced to remove its Triple Vortex design from the shelves. The subject then turned to the patent in question, which expires in June.

In the eyes of Dyson’s legal team, design work already undertaken by Hoover would leave its rival with what businesses like to call an “early mover advantage”, should Hoover wish to launch its own range of products on the back of the Dual Cyclone.

So, Dyson filed for a “post-expiry injunction” – just on Hoover. This sought to prevent Hoover from benefitting from precious time already spent on the design and development of its system while the Dyson patent was in force.

Why could it do this? Simply because it is against copyright law to be reproducing patented technology, even if you do so behind closed doors, for the duration of the patent. Hoover argued that its three-vortex system is an original invention, but once again, the High Court found in favour of Dyson. Hoover was deemed to have gained a “springboard” of 12 months over other design players seeking to use the technology, so has been forbidden from using Dual Cyclone-based designs until June 2002. The patent, however, was not in any way extended.

Interestingly, a spokesman for Hoover told Design Week that it would not be re-instating its Triple Vortex machine at the centre of the controversy anyway, but instead, “we will be rolling out some new products in the near future”, he said.

The broader implications for other designers are clear enough. You are able to take products apart for experimental purposes, or for fun, but you are not permitted under intellectual property law to begin building your own products using patented designs.

Fearon is in little doubt that such practice frequently goes on in design workshops. “You would be foolish if you thought your competitors were not pulling your product apart to see how it works,” he says. Now, competitors in general are likely to try harder to conceal things if they are breaking the law, he suggests. So what about ethics?

Simon Clark, intellectual property lawyer at Theodore Goddard, regularly represents the interests of the Anti-Copying in Design movement. In his experience, such copyright infringement does go on unobserved.

Most worrying is that design groups are major perpetrators of this malpractice. “So much copying is going on generally. Our research shows that a third of copying is done by other design companies,” says Clark.

Clark feels that things are improving slowly, however: “You can definitely see that changes have taken place in some [offending] companies. Certain retailers that we have dealt with have changed their practices, for example. It is just a question of education,” he says.

Things didn’t all go Dyson’s way with respect to injunctions, though. Its second move to prevent Hoover using the name Vortex was not granted by the High Court. “Because the name “Dual Cyclone” is trademarked”, explains Clark, “Dyson Appliances has applied to register the name and so will be the only company able to use it for vacuum cleaners.

Dyson will have argued that the word Vortex [used by Hoover] will cause confusion among consumers.” The court, he suspects, was not convinced. “It is important for designers to remember to do a search of registered names before they decide on a name,” Clark adds.

Fearon also points out that had Hoover managed to “go further” with its product design it would have more likely succeeded in convincing the court that its system was a new invention. “But if the Dyson patent covers [any] bagless, cyclonic vacuum cleaner there is not much room for manoeuvre,” he adds.

At the end of the day, designers who are unsure of the law need to check where they stand. As Clark points out: “It’s much cheaper to ask than to find out the hard way.”

Information

Patents are granted for 20 years. After that time the owner must openly publish its knowledge. For very basic information designers can call the Patent Office or check its useful website. Designers who are members of Acid can also access a free legal help line number.

ASA www.asa.org.uk

Anti-Copying in Design www.acid.uk.com

Bird & Bird www.twobirds.co.uk

The Patent Office www.patent.gov.uk

Theodore Goddard www.theodoregoddard.co.uk