The UK Court of Appeal has recently handed down a landmark judgment containing guidelines on the scope of protection available to a registered Community design.
The decision in Proctor & Gamble Co. v Reckitt Benckiser (UK) Ltd is the first of any appellate court in the EU on this issue and will be of great interest to manufacturers of consumer products and their intellectual property advisers.
In his judgment, Lord Justice Jacob said that when considering an alleged breach of a registered Community design the court should adopt the standpoint of an “informed user”, who was more discriminating than the average consumer with design issues. The court should look closely at the registered design and the allegedly infringing article and ask whether it produced a different overall impression, rather than relying on expert evidence.
The court’s findings in this case, that general similarities between two products were insufficient for infringement to be found, may leave product owners doubting the extent of protection granted by a registered Community design.
The case concerned design right infringement proceedings between consumer goods manufacturers Proctor & Gamble (P&G) and Reckitt Benckiser. P&G brought the claim against Reckitt Benckiser for allegedly copying P&G’s registered Community design of a spray canister for its air freshener product Febreze.
In 2006 the High Court ruled in favour of P&G on the basis that the accused product should give the informed user a “clearly different” impression than the registered design if it were to avoid the infringement claim. This reasoning was derived from Recital 14 and corresponding interpretation of the requirements for registration of a Community design right contained in the 2002 Council Regulation on Community Designs, which infers that a product must “clearly differ” from a prior art in order to be registered. The Court of Appeal has overturned this ruling.
The judgment offers the first senior judicial interpretation of Article 10(1) of the Regulation. Article 10(1) deals with the scope of the protection conferred by a Community design which includes “any design which does not produce on the informed user a different overall impression”.
The court held that the “informed user” was not the same as the “person skilled in the art of patent law”. An “informed user” is one who had experience of other similar articles and would therefore be reasonably discriminatory, able to appreciate detail enough to decide whether a design created an overall impression which had individual character and whether an alleged infringement produced a different overall impression. An “informed user” was alert to design issues and was better informed than the “average consumer” referred to in trade mark law, and as such things which may infringe a registered trade mark may not infringe a corresponding registered design right. The court found that the “overall impression” test is inherently imprecise because an article may seem to one man to create a “different overall impression” and yet to another not to do so, but this is typical with the scope of rights in a visual work. Lord Justice Jacob clarified that, contrary to the High Court’s reasoning, the test is “different” not “clearly different”. Protection for a novel product will therefore be greater than for a product which is incrementally different from the prior art, though different enough to have its own individual character and thus be registered.
Article 10(2) narrows the protection granted by the registered Community design. It states that in assessing the scope of protection under Article 10(1), “the degree of freedom of the designer in developing his design shall be taken into consideration”. This means that small differences will be enough to create a different overall impression where freedom of design is limited.
Since their inception in 2002, product owners have found registering Community designs to be a quick and cheap means of securing an intellectual property right that is enforceable across the whole of the EU.
While this case provides welcome guidance on how key terms of the Regulation should be interpreted which will assist brand owners and IP practitioners, if the courts in other Member States follow this decision then the scope of protection for registered Community designs may be narrower than brand owners anticipated.
It goes without saying that the subjective and imprecise nature of the “overall impression” test is likely to be at the crux of many more design infringement disputes in the future.