Background
PulseOn and Garmin both make wrist heart rate monitors ('WHRMs') which can be worn on the wrists of those with an interest in their cardiac performance. WHRM’s operate by using light (usually LED) to measure changes in tissue volume caused by pulsing blood flow. The consequent variations in the light signal are then processed by a photo sensor and used to deduce heart rate. Different colour LEDs need to be placed at varying distances from the photo sensor, due to the differing wavelength of the emitted light.
PulseOn’s RCD sought to protect the shape and arrangement of the three oblong LED sensors, the rectangular photo sensor and the raised circular platform, which ensured the LRDs and photo sensor were in close contact with the wearer's skin. In acAcordance with the EUIPO’s, other features for which protection was not claimed were shown in dotted lines.
The judge at first instance, Roger Wyand QC (sitting as a deputy High Court judge), concluded that PulseOn's designs were valid, but that the similarities and differences between the respective designs meant that the Garmin design did not infringe PulseOn’s RCDs. PulseOn appealed the decision on a number of grounds, including:
- the judge was wrong to find that there was little design freedom
- the judge had wrongly conducted the comparison by referring to enlarged models of the devices rather than the devices themselves
- the judge had attached undue weight to features which were determined by technical considerations, and
- by asking himself whether Garmin’s devices would produce an ‘identical impression’ on the informed user (rather than whether the allegedly infringing design produces on the informed user a different overall impression), the judge had applied the wrong test for infringement.
Court of Appeal
The Court dismissed all four grounds of PulseOn’s appeal. In doing so, it held:
- Although the judge might have overstated the position slightly in terms of the design constraints on WHRMs, his overall conclusion that there was little design freedom was still valid. The Court was not persuaded that the informed user would be aware that the arrangement shown in the RCD was optimal as compared to other possible arrangements. The informed user was not an expert engineer and was not to be taken to be aware of all the engineering considerations which went into the finalisation of a particular design. The Court agreed with Garmin that this approach would undesirably open the door to a large body of evidence in every RCD case.
- There was nothing inherently wrong in using the models for the comparison, particularly as the size and nature of the apertures made visual inspection difficult and models of the apertures – which were accurate - overcame these difficulties.
- As to the LED apertures, the Court held that even if the informed user worked out the technical reasons for their spacing, they would see it as a deliberate design choice.
- Despite the language which the Judge had chosen, he did not apply an incorrect test. Although it was not required to perform the assessment itself, the Court agreed with the Judge that the alleged infringements did not produce the same overall impression as the RCDs.
A copy of the Court of Appeal’s decision can be accessed here: PulseOn Oy v Garmin (Europe) Limited [2019] EWCA Civ 138.
Conclusion
The decision is a useful reminder of the impact of the degree of design freedom one can have when it comes to assessing the overall impression of the designs. When it comes to more technical products, even small design differences can create a different overall impression on the informed user and this case follows a line of cases such as PMS v Magmatic and Samsung v Apple where the scope of protection afforded by a RCD has been found to be narrow. That said, RCDs can still be a powerful weapon in your IP armoury: they are relatively quick and easy to obtain and can be an effective enforcement tool.
For further information please contact Emily Roberts, Jeremy Dickerson or your usual intellectual property team contact.