European Union: New EU Design Law In Practice: A New Area Of Disharmony?

When the new EU designs regime came into being in 2002 it was intended to do two things: i) create new EU-wide Community design rights, and ii) harmonise existing national registered design law. The material aspects of the regime— how to assess infringement and validity—are the same for both national registered rights and Community rights.

As with any new legislation, it raised several questions of interpretation. In particular, infringement and validity both involve assessing whether two designs create the same "overall impression" on the "informed user". Both of these are new concepts that immediately created an interpretation issue: who is the informed user, what is the overall impression of a design and how should it be assessed?

The new legislation is now beginning to be tested in the courts as the first infringement cases (as opposed to OHIM validity challenges) are coming to trial. One of these, Procter & Gamble v Reckitt Benckiser, is particularly interesting because it involved the courts of no fewer than six EU Member States all considering whether the alleged infringement did, or did not, create the same overall impression as the design, on the informed user. The results, at both first instance and on appeal, are interesting.

The Design

The design in question was for a sprayer, and is depicted below. Alongside it is shown the alleged infringement. It was suggested that some of the features of the design, such as the trigger and shape of the neck (which functions as a grip), were "solely dictated by technical function", but in none of the proceedings did such arguments succeed. This is perhaps because the relevant provision of both the harmonising Directive and the Regulation that created the Community rights, which precludes protection for features solely dictated by technical function, had already been interpreted very narrowly by both the European Court of Justice (at advocate general level) and the English Court of Appeal. Both have said that only features that have just one way of being implemented are denied design protection.

Accordingly, in each of the proceedings, the question to be answered was whether the alleged infringement created the same overall impression on the informed user as the registered design. On that question, infringement was found nine times, including two appeals and non-infringement found three times (in each case on appeal).

The Decisions

It should be noted that the only substantive proceedings took place in the United Kingdom; the remaining proceedings all took place as part of preliminary measures. However, as will be discussed briefly below, in the circumstances of this case, the difference is semantic, because the crucial question of overall impression was considered by all of the courts.

The United Kingdom

At first instance, the English High Court found the design infringed. In coming ultimately to its conclusion, the Court considered the dominant visual features of the design and found these to be reproduced— albeit with, in the Court's view, insignificant modifications—in the alleged infringement. While expert evidence was heard on several issues, the Court considered this unhelpful save on the question of technical function (which, it will be remembered, was a defence that did not succeed in this case).

On appeal, the English Court of Appeal overturned the decision. It did so having identified an inconsistency of approach by the first instance judge in considering the overall impression of the design and then comparing that to the alleged infringement. The Court of Appeal therefore considered the question afresh and determined that, in its view, the overall impression was different. In so doing, the court made several interesting observations:

The Other Decisions

In France (twice, including the Court of Appeal in Paris), Belgium (twice), Germany (twice) and Italy, the courts concluded in preliminary injunction proceedings that the design had been infringed. The same conclusion was reached in Austria at first instance but this was overturned at both second and third instance.

Are the Decisions Reconcilable?

As mentioned, the English courts, at first instance and on appeal, were the only ones that considered the question in substantive proceedings. It has been suggested that this is sufficient explanation for the difference at least between the English appeal decision and the interlocutory decisions that went the other way (that is, all save Austria). However, examination of the decisions themselves reveals this to be a semantic difference. As the English Court of Appeal noted, the question of infringement was not one for which the court really needs any evidence to make a determination, other than perhaps for the purposes of a technical function defence (which didn't succeeded anywhere). The preliminary measures decisions all considered the matter of overall impression not on an "arguable case" basis but on a merit basis, and in so doing, they all specifically addressed themselves to the key question: was the overall impression the same? The vast majority, including the Paris Court of Appeal, said it was.

So what explains the different results? Perhaps the differing outcomes indicate a difference of approach to design protection at a national level. There are certainly indications in the decisions that the different results arose from differing assessments of what the overall impression actually was, and which features (if any) contributed to it. The courts that found infringement considered the dominant features of the design to have been reproduced— albeit more crudely—in the alleged infringement.

Interestingly, several of the preliminary measures courts, notably those of France and Italy, seem to have considered the fact that the registered design had won awards for its innovation and quality to have been helpful to the case on infringement.This perhaps indicates a particularly sympathetic approach to protection of innovative designs. While, as previously noted, the English appeal decision does suggest innovative designs should get broader protection, by contrast, in this particular case, the English and Austrian appeal courts seem to have considered the difference in "quality" as indicative of a different overall impression. At first instance in the UK, the judge was concerned that such a difference in quality would allow cheap copies to escape infringement, something that did not concern the Court of Appeal. This aspect of the UK appeal decision has led to some adverse comment in the design industry, although that is based on the impression, which is not intended, that the decision is a licence for cheap imitations.

If the difference is the result of different approaches, ultimately that is a matter that the ECJ may have to address, so far as possible, given the unitary and harmonised nature of the rights in question. Alternatively, perhaps the different results merely indicate the subjective nature of the assessment in cases where the alleged infringement is a very similar, but not identical, reproduction of the design. As the English Court of Appeal noted:

Howrey acted for Procter & Gamble in the litigation across the EU.

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