Pulseon OY v Garmin (Europe) Ltd

Registered design infringement is determined by asking whether the accused design produces a different overall impression on the informed user. The assessment must remain global, although common features and features constrained by technical function usually carry less weight.

Design freedom may be limited without being wholly eliminated. Similar designs alone do not establish a lack of design freedom; the court must assess all relevant evidence. Direct comparison is usual, but accurate enlarged models may be used where products are too small or their relevant features are difficult to see. An appellate court should not interfere with the trial judge’s evaluative assessment absent an error of principle.

PulseOn alleged that Garmin’s wrist heart-rate-monitoring smart watches infringed two Registered Community Designs, RCD 4 and RCD 5, concerning the rear arrangement of LED and photo-sensor apertures. The designs were registered for physical activity meters.

The High Court found both designs valid but held that none of the Garmin products produced the same overall impression and therefore infringed. The appeal challenged the assessment of design freedom, the use of enlarged models, the weight given to technically constrained features, and the legal test applied to infringement. PulseOn also sought to advance additional grounds orally. The central issue was whether the judge had applied the correct informed-user and overall-impression approach.

1. Disposition and new grounds. The appeal was dismissed. The additional grounds raised orally were not admitted. The appeal procedure required focused grounds, and Garmin had been deprived of reasonable notice and an opportunity to answer them. The absence of a proper explanation for the delay, together with the Shorter Trials Scheme context, justified refusing permission to advance them.
2. Correct infringement test. Under Council Regulation (EC) No 6/2002 on Community Designs, infringement depends on whether the accused design produces a different overall impression on the informed user. Although the judge used the expression “identical impression”, his directions and reasoning showed that he had applied the correct overall-impression test. The assessment need not be reduced to a verbal description where accurate images sufficiently identify the impression.
3. Design freedom and common features. Design freedom must be considered wherever technical requirements constrain design, even if the constraint is less than absolute. The judge had stated the constraint concerning three LEDs somewhat narrowly, but alternative configurations did not materially widen the scope of protection. The common arrangement of two LED apertures on either side of a central sensor was close to banal and deserved minimal weight. The court must consider all the evidence and must not treat a series of similar designs as conclusive of limited freedom merely because they exhibit a trend.
4. Comparison and technical spacing. Direct comparison is ordinarily appropriate, but it may be impracticable or uncommon where the products are very small or the relevant apertures are obscured by what lies behind them. Accurate enlarged models were therefore permissible. A party cannot rely on difficult-to-see similarities while disregarding difficult-to-see differences. A technical explanation for the greater spacing of the third LED did not remove that spacing from the overall impression; it remained a deliberate feature of the registered design.
5. Overall assessment. The differences in aperture shape, relative size, sensor position and LED spacing outweighed the similarities in number and general arrangement. The Garmin designs therefore produced different overall impressions. The trial judge’s evaluation disclosed no error of principle and was not open to appellate interference. The issues raised by Garmin’s respondent’s notice did not arise.

• Court of Appeal (Civil Division): dismissed the appeal against the High Court judgment.
• High Court, Patents Court: in [2018] EWHC 47 (Ch), found the Registered Community Designs valid but held that Garmin’s products did not infringe them.