UK: High Court Guidance On Community Designs

In this case involving a registered design for an aerosol spray, the High Court has provided welcome guidance on the interpretation of the Community designs legislation (EC Regulation 6/2000 on Community designs (the "Regulation"), including the relevant scope of protection and the nature of the comparison to be carried out by the informed user. On the facts, infringement was established since all of the dominant features of the registered design were present in the infringing item.

For full commentary on the decision in Procter & Gamble Company v Reckitt Benckiser (UK) Limited please see below:

Full Article

The Procter & Gamble Company (P&G) obtained a Community design registration (the Design), intended to be applied to products described as aerosol "sprayers". P&G claimed that the container in which Reckitt Benckiser's air spray freshener "Air Wick Odour Stop" ("Air Wick") was marketed amounted to an infringement of the Design. Reckitt Benckiser (UK) Limited (RB) denied infringement and counterclaimed for invalidity based upon various prior art.

In determining infringement, Lewison J. made a number of useful comments on the interpretation of the Regulation, as follows:

What does the registration protect: The scope of protection is dependent upon the form of representation contained in the design application. Although an applicant must identify the products to which the design will be applied, this does not affect the scope of protection.

The characteristics of the informed user: Although the indication of the product class did not affect the scope of protection, in this case the informed user should be a determination through the eyes of the users of the product class indicated in the registration (sprayers).

The user would be a regular user familiar with the subject matter, with a greater knowledge than the "man on the street". Although he would have knowledge of basic technical considerations, he would not have the level of specialist knowledge as the manufacturer of the articles. As such, he would have some awareness of product trends and recent designs, but not an archival mind with knowledge of all designs to date.

Design Freedom: The constraints on a designer's freedom could include such matters as the nature of the product, health and safety requirements or the rules of any relevant organisation that regulated the industry for which the design was to be used, but will not include internal commercial or financial constraints peculiar to a particular undertaking.

Nature of Comparison: The comparison will be of the registered design against the corresponding part of the allegedly infringing product, rather than the infringing product taken as a whole. This will exclude potentially distinguishing features such as colours and graphics if the registered design is monochome.

An overall impression: Having considered the freedom of the designer, and discarded any design elements dictated solely by function, the informed user must come to the overall (visual) impression of the two. The informed user will approach this task more rigorously than his comparable average consumer for trade mark law. The overall impression will be what sticks in the mind after the two designs have been carefully viewed, rather than a simple catalogue of differences and similarities.

Lewison J. considered the five dominant features of the registered design were to be found in the Air Wick product. Although there were some minor variations in design, such differences were found to be relatively insignificant, which did not detract from the overall impression created by the two designs. Accordingly, the case for infringement was made out.

Finally, all three pieces of prior art relied upon by RB as allegedly invalidating the Design were considered to create a very different overall impression. As such, the Design was validly registered, and infringed.

Comment

Lewison’s judgment is a carefully considered review of the legislation, which provides helpful guidance on key concepts in the Regulation. On the facts, infringement seemed inevitable once the validity of the Design was upheld due to the close visual similarity. It is also interesting to note that the comparison must be of the design to only the comparable element of the infringing product. Since the scope of protection and infringement is determined by the particular representation of the design, this makes the strategic decision of how the design itself is represented in the application a vital one.

For the full text of the decision (which includes a representation of the Design and infringing product, click here.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

The original publication date for this article was 11/01/2007.