On Wednesday 10th October the Court of Appeal gave the first guidance from a senior court in the UK as to the scope and interpretation of registered community design right protection. The ruling that Reckitt Benckiser’s Air Wick air freshener does not infringe the community registered design for Procter & Gamble’s Febreze air freshener ("the Design") marks the first time that the principles governing Council Regulation EC 6/2002 ("the Regulation") have been considered at such a level.

Background

The case was first heard in 2006 when Procter & Gamble sued Reckitt Benckiser. Procter & Gamble claimed that its award winning design for its Febreze product was infringed by the Airwick product. Reckitt Benckiser counter claimed for invalidity of the Design. In a judgment given in December 2006, Mr Justice Lewison held that the Design was both valid and infringed. Reckitt Benckiser appealed the judgment. The appeal was heard by Lord Justices Jacob, May and Dyson with the leading judgment given by Lord Justice Jacob.

Approach and Principles

Article 10 (1) of the Regulation states;

"The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression."

Central to the Court of Appeal’s judgment were the issues of "what constitutes the informed user" and how should "different overall impression" be applied.

In considering the definition of the informed user, Jacob LJ referred to Recital 14 of the regulation which states that the informed user should take into "consideration the nature of the product to which the design is applied or in which it is incorporated and in particular the design sector to which it belongs and the degree of freedom of the designer in developing the design." The informed user is therefore aware of existing designs and able to appreciate sufficient detail to assess the overall impression. Jacob LJ distinguished between this person and the average consumer referred to in trade mark law who is granted a degree of imperfect recollection. The informed user is more discriminating. Jacob LJ pointed out that policy considerations are consistent with such an approach. Whilst trade marks protect the consumer from confusion or deception, a design registration protects the design itself.

Recital 14 was also considered in relation to "different overall impression." Jacob LJ stated that the words "whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus" were relevant for registrability but did not place a requirement that an accused design had to "clearly differ" from the registered design in order not to infringe. They simply need to be different. This, he felt, was contrary to the approach taken by Lewison J. The judgment goes on to state that whilst the test of "different overall impression" is imprecise there are some general factors to be taken into consideration including:

  • The more novel the registered design, the more significant the overall impression is likely to be and the more room there is for differences which do not create a different overall impression;
  • The court must "don the spectacles of the informed user"; and
  • The overall impression of the registered design and the alleged infringement must be identified with care and thought given to the level of generality that would be adopted.

The Arguments

Whilst Reckitt Benckiser agreed that Lewison J had correctly identified the overall impression of the Design and the alleged infringement at the outset, it claimed that he had then failed to compare those impressions. Instead he had referred to a over generalised list of the features of the Design. This had led him to come to the wrong conclusion. He had adopted "such a level of generality that the overall impression is not captured" and had failed to give sufficient weight to the differences between the Design and the alleged infringement. In contrast, Procter & Gamble submitted that the scope of protection should be wide enough to capture products which give a "slightly cheaper or coarser impression".

Outcome

Whilst there was some comfort for Proctor & Gamble in that the appeal on validity was dismissed with Jacob LJ commenting on how "innovative" the Design was, the Court of Appeal concluded that the High Court Judge had erred in principle on the issue of infringement. He agreed with Reckitt Benckiser's criticisms of the Judge's assessment of the overall impression and held that the Judge had impliedly and wrongly considered that the alleged infringement was required to give a clearly different impression on the informed user. Jacob LJ agreed that the shape of the Airwick head differed to the Design, as did the necks of the products and the triggers. In concluding that the Design was not infringed, the Court of Appeal agreed with the Austrian Court of Appeal which, in parallel proceedings, had overturned a finding of infringement in the Austrian court of first instance.

Comment

The judgment provides welcome guidance on the application and interpretation of the Regulation although it is interesting that the parties do not appear to have sought guidance from the ECJ as to whether "clearly different" is indeed part of the infringement assessment or whether the informed user is to be granted any degree of imperfect recollection. These issues may yet come before a higher court and previous experience tells us that this case is unlikely to mark the end of the debate. It is worth noting that the case also provided some practical guidance on the use of evidence in design cases. Jacob LJ stated "By and large it should be possible to decide a registered design case in a few hours. The evidence of the designer, e.g. as to whether he/she was trying to make, or thought he/she had made, a breakthrough, is irrelevant. The evidence of experts, particularly about consumer products, is unlikely to be of much assistance." Building on the guidance he gave in Dyson v Qualtex in the Court of Appeal on the approach to design right cases, he stated that judges should think very carefully before giving blanket permission for the use of experts. We will wait and see as to whether judges and IP practitioners will heed his warning.