Marks & Spencer PLC v Aldi Stores Limited
[2024] EWCA Civ 178
Chiaro Technology Limited v Mayborn (UK) Limited
5 October 2023
[2023] EWHC 2417 (Pat)
High Court
Two companies made similar wearable breast pumps. A judge decided they weren't exactly alike, even after ignoring the parts that had to be designed a certain way for the pump to work. The differences were big enough that the judge said the pumps didn't infringe on each other's designs.
Key Facts
- •Chiaro Technology Limited (Chiaro) claimed infringement of registered designs for breast pumps against Mayborn (UK) Limited (Mayborn).
- •Mayborn's product, the 'Made for Me Wearable Breast Pump' (MFM product), was alleged to infringe Chiaro's designs.
- •Chiaro's designs included the entire pump (0010), the front housing (0002), and the milk collection vessel (MCV, 0003).
- •The pumps in question are wearable, designed to be worn inside a bra.
Legal Principles
Registration of a design grants exclusive rights to use that design and any design not producing a different overall impression on the informed user.
Registered Designs Act 1949, s 7(1)
In determining overall impression, the designer's degree of freedom is considered. Greater freedom means minor differences are less likely to create a different overall impression.
Marks and Spencer v Aldi [2023] EWHC 178 (IPEC), adapting Cantel Medical (UK) Limited v ARC Medical Design Limited [2018] EWHC 345 (Pat) and H&M Hennes & Mauritz BV & Co KG v OHIM (Case T-525/13)
Rights do not subsist in features of appearance solely dictated by the product's technical function.
Registered Designs Act 1949, s 1C(1)
The assessment of design freedom starts with the design itself, considering constraints imposed by technical function and other factors. The design corpus provides further evidence but is not the sole starting point.
Eternit v EUIPO T-193/20, Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206, Dyson v Vax [2010] FSR 39
Outcomes
The claim for infringement was dismissed.
The court found that the MFM product did not infringe any of Chiaro's registered designs because significant differences existed, particularly after excluding features solely dictated by technical function.