In the first case to be heard on Registered Community Designs in the UK Court of Appeal1 , the Court has ruled on the scope and interpretation of the monopoly in these novel and important intellectual property rights.
What is a Registered Community Design (RCD)? An RCD2 is available to protect virtually any aspect of a product's appearance, for example, resulting from features of, in particular, its line, colour, shape, texture, contours, materials or ornamentation. An RCD lasts for an initial period of 5 years, renewable up to a total of 25 years.
The decision of the High Court3
Proctor & Gamble Co (P&G) originally brought proceedings against Reckitt Benckiser (RB) in the UK High Court, alleging that RB's "Air-Wick" spray freshener infringed P&G's RCD covering its "Febreze" spray freshener.
To be valid, an RCD must be "novel" (ie not identical to other designs made available to the public before the filing date) and have "individual character" (ie create a "different overall impression" to that created by prior designs on "users"). Conversely, to be infringed, an alleged infringement must create the same "overall impression" on "users" as the RCD.
RB argued P&G's RCD was invalid given the prior art (ie too close to those designs previously on the market) and was not infringed, as their “Air-Wick” design formed a different overall impression. However, the judge disagreed, holding P&G's RCD both valid and infringed. RB appealed.
The decision of the Court of Appeal
The Court of Appeal held that P&G's RCD was indeed valid, but not infringed, as:
(i) The dominant features of the “Air-Wick” design had been examined at too general a level;
(ii) Smaller differences would be enough due to the design limitations for sprayers; and
(iii) Accordingly, the products were different, as the Air- Wick spray had a “lizard”-like head, while the Febreze had a “snake”-like head and a thinner more elegant neck. Moreover, the triggers were different and the “cape” of the Febreze flowed elegantly over the curved top of the canister, whereas the Air Wick just “sat” on top.
Key points of the decision
The same tests for “overall impression” in validity and infringement?
The Court clarified that there are two separate tests for assessing the differences in “overall impression” for the purposes of novelty and infringement. Only in the case of validity must the overall impression “clearly differ” or put "clear blue water" between the design to be registered and the prior art. For the purposes of infringement the “overall impression” need simply be “different”.
Who is the “informed user”?
The Court re-examined the concept of the "informed user" and elaborated on previous case law5. The “informed user” is reasonably discriminatory, familiar with the corpus of the design field and design issues, and better informed than the average consumer - for example a sales agent, or in-house designer (but not a manufacturer or average man in the street).
Evidence and experts
Perhaps most importantly, the Court also made some pragmatic observations regarding expert evidence and evidence of "success" in RCD cases, as follows:
An RCD case should be decided in a few hours and there is therefore unlikely to be a need for cross-examination (especially detailed crossexamination) of experts. In any event, the place for expert evidence is limited as it is unlikely to be of assistance, given that virtually anyone can assess the “impression” created by an RCD (or an infringement).
- Evidence of “design success”
Independent accolades and awards won by the RCD in its physical embodiment can be highly relevant in determining whether a design has put "clear blue water" between itself and the prior art and is therefore valid.
The decision of the Court of Appeal provides extremely useful guidance regarding the assessment of novelty and infringement of RCDs (and, by analogy, their unregistered counterparts, Unregistered Community Designs).
In particular, the case means that those with successful designs protected by an RCD can enforce that RCD more cheaply, quickly and efficiently than was previously the case, as less time (and therefore legal costs) need now be expended on expert evidence, cross examination, prior art and, hence, the overall proceedings.
Therefore, RCDs look set to play an increasingly key role in the efficient protection of original design in the UK and Europe.