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In its decision of 10 October 2007, the UK Court of
Appeal issued an important ruling relating to infringement of a Community
Registered Design (CRD). The UK Court of
Appeal is the first appellate court in any EU member state to rule on
infringement of a CRD in full proceedings.
BackgroundProctor
& Gamble produce and sell an air freshener under the name Febreze® Air
Effects, which is packaged in a canister having a trigger that actuates a valve
to release air freshener in a horizontal direction. The Proctor & Gamble canister is the
subject of CRD number 000097969-0001.
Reckitt
Benckiser also produce an air freshener product that is packaged in a canister
having a trigger that allows the product to be dispelled horizontally. This competing air freshener is sold under
the name Air Wick® Odour Stop.
Proctor & Gamble instigated
proceedings for infringement against Reckitt Benckiser in the UK High Court in
2006, and also obtained a number of interim injunctions against Reckitt
Benckiser in the National Courts of various EU member states. Reckitt Benckiser countered that Proctor
& Gamble’s CRD was invalid.
Article 10(1) of the Community Design
Regulation provides that “The scope of protection conferred by a Community
design shall include any design which does not produce on the informed user a
different overall impression”.
(The CDR
regulations can be viewed by clicking here).
In the UK High Court, the
judge, Lewison J., decided that the CRD and the Air Wick® canister created the
same overall visual impression. Having,
thus, found infringement of Proctor & Gamble’s CRD by Reckitt Benckiser’s
Air Wick® canister, the judge went on to find the CRD to be valid.
In coming to the decision
regarding infringement, the judge accepted that Proctor & Gamble’s CRD was
of “a far greater quality and more integrated” than Reckitt Benckiser’s
Air Wick® canister, but noted that the differences between the two canisters
should not allow the Air Wick® canister to escape infingement as this would
allow a poor quality imitation to escape infringment despite creating the same
visual impression.
In its decision of 10 October 2007, the UK Court of Appeal affirmed the UK
High Court’s finding of validity of the CRD, but overturned the UK High Court’s
decision regarding infringement.
Reasons for the UK Court of
Appeal’s DecisionIn attempting to interpret the
meaning of the terms “informed user” and “overall impression” the UK Court of
Appeal looked to the CRD Regulation’s accompanying Recitals. Recital 14 (which relates to registration but
contains the same terms) states;
“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 product to which the design is applied for
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”.
The UK Court of Appeal decided
that the “informed user” was not a designer or an average consumer, but
(following a definition used by the Higher Provisional Court of Vienna) that
the informed user would "have a more extensive knowledge than an
average consumer” and “in particular he will be open to design issues
and will be fairly familiar with them”.
The UK Court of Appeal deemed that the “informed user is alert to
design issues and is better informed than the average consumer in trade mark
law” and “Where shapes are, to some extent, required to be the way they
are by reason of function, the informed user is taken to know that”.
The UK Court of Appeal also
decided that, while the overall impression should clearly differ from
the prior art for registrability (this wording coming from Recital 14), an
accused design need not be clearly different from a registered design in order
to avoid infringement; “If a design is different, that is enough—an informed
user can discriminate”.
On the facts of the case the UK Court of Appeal decided
that the judge in the UK High Court had erred in principle in making his
finding of infringement. In particular,
the judge had failed to apply the overall impression of each design and had failed
to state what the overall impression of the alleged infringement was at the
point he was considering infringement.
In addition, the judge was incorrect to apply by implication that the
accused product had to be clearly different to avoid infringement and to apply
a "stick in the mind" test rather than "what would impress
now" test. Finally, the judge
incorrectly approached the dominant features of the design at too general a
level, a level such as not to convey in words the overall impression which
would be given to an informed observer.
Regarding the UK High Court
judge’s concern that a registered design should protect against poor quality
imitations, the UK Court of Appeal stated that, “A “poor quality” imitation
if it does not convey the same impression as the “original” will fail on its
own design merits, or rather lack of them.
If it conveys the “same impression” then it can hardly be a “poor
quality imitation” and will succeed for the same reason as the original”.
The UK Court of Appeal decided in
this particular case that, although the same features were found in the CRD and
the Air Wick® canister, the overall impression they produced on the informed
user was different.
Evidence in Registered Design
cases
In delivering the UK Court of
Appeal’s decision in this case, Lord Justice Jacob criticised the use of
evidence in registered design cases. He
stated, “The most important things in a case about registered designs are i)
The registered design, ii) the accused object iii) the prior art. And the most
important thing about each of these is what they look like”.
Evidence from the designer relating to what he/she was
trying to make was dismissed as irrelevant, and the evidence of experts,
particularly about consumer products was considered unlikely to be of much
assistance. Also irrelevant was any
evidence as to whether the design had been copied or not, as copying was
irrelevant to the finding of infringement under registered designs. It was suggested that courts should take care
before allowing any expert evidence in future.
CommentThe UK Court of Appeal has given the first full judgement
that considers who the informed user is, what different overall impression
means, and the proper analysis to carry out in order to determine
infringement. Their conclusion that the
informed user is discriminatory, familiar with design issues, and may find a
different overall impression when comparing an “original” and a “poor quality
imitation”, could mean that the scope of CRDs is not as broad as their owners
might previously have hoped.
Despite Lord Justice Jacob’s comments concerning the most
important things in a case about registered designs, when considering whether
or not the CRD and Reckitt Benckiser’s Air Wick® canister created the same
overall impression, both the UK High Court and the UK Court of Appeal
considered not only the representations of the CRD, which were black and white
line drawings, but also physical embodiments of Proctor & Gamble’s Febreze®
Air Effects canister.
In the UK Court of Appeal, Lord
Justice Jacob stated “It has
long been the practice, where there is a physical embodiment of a registered
design, for the court to look at that.
Of course one has to be careful that the physical object is a true
reproduction of the design”. However,
since the quality of the physical embodiment appears to have contributed to the
overall impression produced by the CRD, would the result of this case have been
different if the court had only compared the CRD, the accused object, and what
they look like ?
In future, where the physical
embodiment of a CRD is of “a far greater quality” than the alleged
infringement, claimants may wish to resist the introduction of any physical
embodiments of the CRD into the evidence before the court in infringement
proceedings.
EndnoteIn a phrase that is destined to be
repeated in CRD infringement cases across the EU for years to come, Lord
Justice Jacob stated that the court must “don the spectacles of the informed
user” when comparing the registered design with the alleged
infringement. So along with the other
details we have gleaned about the nature of the informed user from this UK
Court of Appeal decision, we know that he or she also has poor eyesight!
The full text of the UK Court of Appeal decision can be
found by clicking here.
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