All shapes and sizes – ‘Elvie’ breast pump registered designs not infringed by Tommee Tippee in-bra wearable breast pump

The High Court has handed down its judgment in a speedy trial in the case of Chiaro Technology Limited v Mayborn (UK) Limited. The court held that the defendant’s in-bra wearable breast pump did not infringe the claimant’s UK registered designs, as most of the features of shape they had in common were solely dictated by the product’s technical function. The remaining design elements were sufficiently different to produce a ‘different overall impression’, so the claim failed.

Background

The claimant, Chiaro Technology Limited (“Chiaro”), holds various UK design registrations relating to the ‘Elvie’ in-bra wearable breast pump and its components. The Elvie pump is a popular product which Chiaro said had ‘revolutionised’ the market for electrical breast pumps, allowing mothers to pump milk discreetly thanks to a fully integrated hands-free pump unit worn within the user’s bra cup, with no external attachments or tubes.

The three registrations pleaded by Chiaro included (1) the design of the overall outline shape of the Elvie pump, (2) the upper pump housing unit and control buttons, and (3) the removable milk collection container forming the base of the product.

Image source: Approved judgment dated 5^th October 2023

The defendant, Mayborn (UK) Limited (“Mayborn”) is best known for its Tommee Tippee® brand of baby feeding products, sold in the UK since the 1970s. In late 2022, it launched the ‘Made for Me’ wearable breast pump (“MFM Pump”), featuring an integrated pump housing and milk bottle unit designed to be worn in-bra for hands-free use.

Image source: Approved judgment dated 5^th October 2023

Chiaro brought proceedings for registered design infringement, claiming that the MFM Pump and its components infringed the Elvie registered designs.

The relevant law

Under s.1C(1) of the Registered Designs Act 1949, “a right in a registered design shall not subsist in features of appearance of a product which are solely dictated by the product's technical function.”

The issues before the Court

Chiaro’s claim relied on the similarity in the overall ‘tear-drop’ or egg shape of the Elvie pump and the MFM Pump. It also argued that there was ample design freedom in designing a breast pump, pointing to the variety of different electric pumps available on the market which looked very different to both the Elvie and the MFM Pump.

Although the court accepted that the relevant ‘design sector’ was electric breast pumps, it stressed the importance of judging technical constraints and design freedom by reference to the actual design in question: “There is no point in considering technical function which does not appear in the design even if it appears elsewhere in the design corpus. […] When considering design constraints relevant to design freedom one looks at the constraints arising out of the design, not some wider, ill-defined, constraints arising out of the design corpus.”

Mayborn’s case was that many of the features of overall shape of the Elvie pump were dictated by their technical function, and should therefore be excluded from protection under s.1C(1). In particular, the overall unit had to be broadly half-egg shaped (i.e. bottom heavy with a rounded front surface and a flatter back) in order to fit securely within the user’s bra, to perform its ‘hands-free wearable’ function. This shape was essential to achieve the force needed to hold the unit firmly in place and to create a vacuum for the suction mechanism to work properly. The breast shield located at the back of the unit (which engages with the breast when in use) was, in Mayborn’s view, also purely functional – as were many other features which Chiaro had pleaded.

The ruling

The court agreed with Mayborn. Mann J held that:

• the egg-shaped front face of the Elvie design was designed to co-operate with the user’s bra, meaning the choice of shape was functional, not aesthetic;
• there was no feature of the breast shield which was not dictated by function, so it was excluded from protection under s.1C(1);
• the milk collection vessel was positioned at the base of the unit and below the nipple line to allow gravity to drive the expressed milk down into the container; and
• the shape of the container had to have a curved front to continue the curvature of the overall unit when attached, and its flat base was required to prevent spillage of milk.

A few key principles came into play in the court’s assessment of technical exclusions under s.1C(1):

1. To fall under the exclusion, there was no requirement that the feature had to be the only means by which the product’s technical function could be achieved. Mann J firmly rejected the “multiplicity of forms” theory, and confirmed that the court simply had to determine whether that aspect of shape was required for functionality. If it was, it was caught by s.1C(1).
2. The court also considered evidence of a number of filed patents relating to wearable breast pumps (including Chiaro’s own patent application for the Elvie pump) which disclosed certain aspects of shape as having technical benefits. Although not conclusive, patents describing the overall teardrop-shape as being technically beneficial stood as strong evidence of its exclusively functional, rather than aesthetic, nature.

Given the number of features of appearance which were excluded from protection under s.1C(1) (and therefore disregarded in the comparison), Mann J concluded that the MFM Pump produced a different overall impression on the informed user to the Chiaro designs. Where there was design freedom, there were notable differences in features of shape between the MFM Pump and the Elvie. The same finding was made for all three of Chiaro’s registered designs, and none of them was held to be infringed.

Mann J also advised caution when applying the much-cited principle from Procter v Gamble that a more visually striking design will tend to attract broader protection than one which is surrounded by similar prior art. As noted in Dyson v Vax, that principle did not apply where the striking elements of the design were ones where there was little design freedom, particularly because of technical requirements. Therefore, the fact that the Elvie pump was among the first in-bra wearable hands-free pumps, and accordingly differed in appearance to other pumps in the design corpus, did not mean it received a more generous scope of design protection.

Notably, the judge indicated that he would have come to the same conclusion even if he was wrong about technical exclusions and the overall curved shape of the pump unit was in fact protected. Even then, the Elvie design’s departure from the design corpus was down to functional considerations and did not attract a broader scope of protection. The visual differences in the detailed design of the MFM Pump would therefore have been sufficient to create a different overall impression in any event. The ‘informed user’ was taken to have a relatively high degree of attention to detail, being particularly attentive to how an intimate piece of equipment would handle and appear.

Implications for rights holders

This decision will be of great significance for designers whose products represent a ‘step change’ in technology, being among the first of their kind – and for their competitors.

Echoing the findings of the Court of Appeal in Dyson v Vax, Mann J’s ruling makes it clear that a registered design will not protect aspects of shape that are required for functional purposes, even if the resulting design is markedly different visually from anything else on the market. Where an innovative design represents a new technology, a registered design will not confer a technical monopoly against others who wish to adopt the same technology.

The case demonstrates the often elusive divide between registered designs and patents. It serves as a reminder that registered designs are concerned purely with aesthetics, whereas technical innovation is protected under patent law.

Importantly, IP rights holders should consider the potential impact of patents – and notably their own patents – on future enforcement claims, if the same features of appearance are described as technically beneficial in a patent on the one hand, and also included as claimed features of a registered design on the other.

CMS acted for the defendant, Mayborn (UK) Limited, in the above proceedings, with a team led by IP Partner Caitlin Heard, Kaisa Patsalides (Senior Associate and head of the CMS London Design Law Team) and IP Associate Claire Dorse.