UK Court of Appeal Narrows Design Right Protection

Report Headline

In a surprise Judgment in the first appeal concerning the scope of Community Design Regulation 6/2002 EC, the Court of Appeal has overturned a first instance Decision which found that Reckitt Benckiser's Air Wick Odour Stop room freshener product design infringed the registered design of Procter & Gamble's Febreze air spray. In particular the CA criticised the way in which the trial judge assessed the "overall impression" of the designs, a key component of determining infringement.

The Parties

The Procter & Gamble Company v Reckitt Benckiser (UK) Limited

The Citation

[2007] EWCA Civ 936

The Tribunal

Court of Appeal

The Context

Community Design Regulation 6/2002 EC (the "Regulation") provides that a design is capable of protection as a Community Design only to the extent that it is new and has individual character: Article 4, the Regulation.

Individual character shall subsist in a design if the overall impression it produces on the informed user is different to that which is produced on the same informed user by a design made available to the public prior to the filing date or priority date of the design in suit: Article 6, the Regulation.

The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the produce to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design: Recital 14, the Regulation.

A Community Design confers on its owner the exclusive right to use it and also to prevent third parties from using it in a wide set of circumstances including offering it for sale, putting it on the market and stocking the product, without the consent of its owner: Article 19, the Regulation.

The protection provided by a Community Design includes any design which does not produce on the informed user a different overall impression and in assessing the different overall impression the degree of freedom of the designer who developed the design in suit shall be taken into account: Articles 10(1) and 10(2), the Regulation.

The Facts

Procter & Gamble ("P&G") is the proprietor of registered Community Design used in a number of EU countries, including in the UK for its Febreze product:

Reckitt Benckiser ("RB") marketed a product design under its Air Wick Odour Stop brand:

At first instance, the RB design was held to have infringed the P&G design. RB therefore appealed to the Court of Appeal. RB argued that the P&G registered design was not valid and further that the trial judge had neglected to compare the overall impression of the P&G design with the overall impression created by the RB design.

The case was heard by Jacob, LJ. In considering the application of Recital 14 of the Regulation in the present case, Jacob, LJ determined (and it was accepted by the parties) that the design corpus was broader than merely air fresheners and in fact covered all sprays, regardless of their application.

Jacob LJ distinguished the informed user in design cases from the average consumer in trade mark infringement cases and pointed out that the first instance judge had erred when he had adopted a similar test to the imperfect recollection test employed when assessing cases of trade mark infringement. In other words, the impression of the design whilst viewed (rather than the impression of the design when recalled) was the test.

He went on to say that if the freedom of the designer was limited by functional considerations, small differences between designs would create a different overall impression on the informed user in accordance with Article 10(2). In assessing functionality of the designs in the present case, Jacob LJ pointed out that each must necessarily be gripped in the hand of the user and the index finger of the hand used to squeeze the trigger in order for the contents of the bottle to be sprayed. Jacob LJ went on to say that a significant departure from the existing design corpus was indicative of the freedom of the designer. On the other hand, a small departure would subsist for one of two reasons: namely, either due to technical restraint or a lack of imagination on the part of the designers of the design corpus. Jacob LJ was of the opinion that the existing design corpus represented a lack of imagination on the part of designers.

In considering the test for different overall impression on the informed user Jacob LJ equated it with the test of substantial copying in copyright infringement matters saying that in each case their lack of clarity left it to the Court to determine whether infringement had taken place. When assessing cases of infringement, Jacob LJ stated that the test is a different overall impression and not a clearly different overall impression. By contrast, when assessing the registrability of designs, they must necessarily be clearly different from the design corpus.

Who is the informed user? Jacob LJ determined that such a user is relatively familiarity with matters of design and that when determining how such a person assesses the overall impression in cases of registrability and infringement respectively, regard must be had to the design in question and the Court must avoid considering the design in suit on too general a basis. Having considered both questions of registrability and infringement, it is for the Court to determine whether the overall impression in each case was different.

The Decision

Jacob LJ held that the RB design did not infringe the P&G registered design on the basis that the overall impression placed on the informed user in respect of the RB design was different to the P&G design.

The First instance judge had failed to properly apply the tests for overall impression of the designs in suit despite having properly identified them during the hearing. Furthermore, he had mis-stated the test for infringement as being a clearly different impression. When assessing the differences between the designs in suit, he had done so on too general a basis and was not sufficiently specific in the manner of the informed user.

Comment

The case provides significant and much-needed guidance from a respected IP specialist in defining informed user and different overall impression. The informed user being someone who is relatively informed on matters of design necessarily means that assessing infringement cases on too general a basis is incorrect and that some specificity to such assessment must be made. It is equally significant that Jacob LJ considered that evidence in such cases was scarcely useful due to the facts of infringement cases being so straightforward and he therefore cautioned against the use of expert evidence save only in respect of technical or factual matters.