News

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.

Background

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 Decision

“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

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.

Comment

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.

Endnote

The full text of the UK Court of Appeal decision can be found by clicking here.