The English Court of Appeal has now set an important precedent in Europe and provided the first authoritative guidance on the nature and scope of the Registered Community Design. Procter & Gamble Co v. Reckitt Benckiser (UK) Ltd., (EWCA Civ 936, 2007) (Jacob, L.J.).

Procter & Gamble (P&G) sued Reckitt Benckiser (Reckitt) over the design of a canister with a nozzle spray of Reckitt’s air freshener (Air-Wick product), claiming that it infringed P&G’s Registered Community Design (in its Febreze product) relating to a canister with a spray nozzle.

Article 10 of Council Regulation EC 6/2002 regarding Community Design Registration (the Community Design Regulation) contains two pertinent provisions: “[t]he 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;” “[i]n assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.”

After the High Court ruled in favor of Procter & Gamble, finding that the two designs were too similar; Reckitt appealed.

The Court of Appeal overturned the decision of the High Court, Lord Justice Jacob of the Court of Appeal providing general guidance on the application of Article 10 explaining that when considering whether a design has been infringed, the court must take the position of an objective “informed user.” In product design cases, the “informed user” is considered to be more discriminating than the “average consumer” (an objective construct used to gauge likelihood of confusion under trademark law) and is presumed to be fairly familiar with design law issues. As explained by Lord Justice Jacob, the point of a design protection is to protect a design as a design. Therefore, what matters is the overall impression created by the design, i.e., would the user buy the design (or product), consider it or appreciate it for its individual design? This inquiry involves the user viewing the article at the time it is bought, not just half-remembering it later in time.

The Court of Appeal further explained that the effect of Article 10(2) was to narrow the scope of design protection. Small differences will be enough to create a different overall impression, especially in cases where freedom of design is limited. The correct analysis focuses on differences in overall impression created by the two designs as perceived by the informed user when he or she looks carefully at the product, rather than the informed user’s recollection of the products subsequent to viewing them. Where a product design produces a “different overall impression” from a registered design, that will be enough to avoid infringement. The difference need not be a “clear difference,” because an informed user is presumed to be familiar with design issues and able to discriminate differences. The main features of the design should be considered at a sufficient level of detail to properly consider the overall impression given to an informed user. One example of such a feature suggested by Lord Justice Jacob would be the quality of the article.

In this case, the Court of Appeal found sufficient differences in the overall impression between the two aerosol cans that the Air-Wick can was considered non-infringing.

Practice Note: The use of an objective informed user perspective and the different overall impression test now seem to be clarified. Nonetheless, the analysis still retains a level of subjectivity.