In its decision handed down today in the appeal in Procter & Gamble Co. v Reckitt Benckiser (UK) Ltd, the Court of Appeal became the first appellate court in full proceedings of any European Union Member State to rule on the issue of when a product will infringe a Registered Community Design.
Background: the new designs regime
Since 2002, a new system for the protection of designs has been in effect throughout the European Union covering both the new Community Design Right as well as national design registrations. Unfortunately, until now there has been very little case law to provide guidance on how the new rules should be interpreted.
Harmonisation of approach between the courts of different Member States is crucial, since the new Unregistered and Registered Community Designs have what is called “unitary character”. In essence, this means the general rule is that everything which is done in relation to a Community Design is done in relation to the whole of the EU. For example, a Community Design can only be declared invalid for the whole of the EU. Further, the Community Design owner can bring one action in one country in order to enforce the rights throughout the EU. However, harmonisation does not always come naturally to courts from the differing common law (UK and Ireland) and civil law (continental European) traditions.
In this case, the Court of Appeal had the exclusive jurisdiction to rule on Procter & Gamble’s design for the whole of the EU even though various other courts had ruled on Procter & Gamble’s applications for interim injunctions pending the UK trial. This gave a unique opportunity for the Court of Appeal in giving its binding decision to consider the civil lawyers’ approach. In its judgment the Court expressly approves various statements of the Austrian Court of Appeal in relation to the same issues, given on an interim basis. This coordinated approach gives the decision even greater weight as regards future Community Design cases in whichever country they are brought.
Since the same criteria as to infringement apply when the design in dispute is a UK Registered Design, whether registered before or since the implementation of the Designs Directive in 2002, the judgment determines the analysis to be applied in future registered design cases of whatever geographical scope.
Procter & Gamble have registered a large number of Community Designs. In this case the design in question was for a trigger-operated sprayer for a household air freshener. The design was a major success in the USA and won a number of design awards.
Reckitt Benckiser launched its own trigger-operated air freshener canister in Europe in late 2005.
1. Proctor & Gamble Design
2. Air Wick Odour Stop
In 2006 Procter & Gamble sued in the High Court for infringement, as well as obtaining interim injunctions in a number of other EU Member States. Under the Community Designs Regulation, however, the English Courts were seized of exclusive jurisdiction as to the final determination of whether the design was infringed or, as Reckitt Benckiser counterclaimed, invalid.
The key issues under consideration in this case were the characteristics of the informed user, and the linked issue of what constitutes the “overall impression” a design makes on the informed user. This is an entirely new test, not derived from the preceding national law of any Member State, and the Regulation is not very helpful in defining the notional “informed user.” Further, the potentially subjective nature of an “overall impression” has until now made it difficult to advise with any confidence as to what would or would not be considered to make the same overall impression as any given design registration. The Court of Appeal addressed these issues in the judgement in the context of infringement only since they found the design registration valid. However, during the hearing they considered these points in the context of both infringement and validity since they arise for both and the infringement reflects this accordingly.
The informed user
The Court of Appeal concluded that he or she is clearly not the same sort of person as the “person skilled in the art” of patent law. The equivalent to that person in the field of design would be some sort of average designer, not a user. In relation to the same test – overall impression – as applied to the validity of a registration, Recital 14 assists by specifying that an informed user takes into account both the existing design corpus, and the degree of freedom of the designer in developing the design. Thus, the informed user is informed to the extent of having an awareness of the kinds of designs in use in the field in question, and also of the constraints under which a designer operates. The Court of Appeal held that the same characteristics must be imputed to an informed user for the purpose of the test for infringement.
The informed user is therefore someone with experience of the kind of products in question and fairly familiar with design issues. As a result, he or she is necessarily more discriminating than the “average consumer” whose perception is paramount in assessing trade mark similarity. Consequently, things which may infringe a registered trade mark may not infringe a corresponding registered design.
Further, where shapes are, to some extent, required to be the way they are by reason of function, the informed user is taken to know that and accordingly to discount them in forming his or her overall impression. For instance, in the case itself, concerning rival spray canisters for air fresheners, both products had a trigger and something of a “pistol grip”, narrowing the canister to enable the hand to fit around at the right level to pull the trigger. This the Court held to be some constraint on design freedom– the product must be grippable so that the index finger can pull the trigger, the trigger must be shaped to fit the finger and have sufficient space behind it for it to be pulled. That is a given. The informed user must take those requirements into account when assessing overall impression.
As to the design constraints, the Court upheld the judge below in ruling that where freedom of design is limited, smaller differences will be enough to create a different overall impression. However, the “freedom of the designer” referred to is not that of a particular party, whose economic situation or factory tooling for instance might favour a particular design over another – it is the degree of choice any designer would have in creating his design.
The overall impression test
The Court held that the assessment of overall impression should in each case be done with the relevant design at hand, rather than merely recollected in the way that confusion is assessed in trade mark cases. This was because the purpose of a registered design is to influence the consumer who is considering buying the product. The consumer makes that decision with the product in front of him or her, and an overall impression which influences that decision is formed at that point in time. The consumer does not choose a product by its design because he or she takes that as an indication of origin or quality, which could be influenced by previous experience of a particular producer, but because it conveys the right message – whatever that may be for the product concerned – about the character of the product.
The Court acknowledged that the test of overall impression is inherently rather imprecise: an article may reasonably seem to one man to create “a different overall impression” and yet to another not to do so. But, it is always so with the scope of rights in a visual work. The Court commented that whatever words the legislator chooses, there is bound to be a considerable margin for the judgment of the tribunal.
A new design which is markedly different from anything that has gone before is likely to have a greater overall visual impact than if it is “surrounded by kindred prior art.” The overall impression created by such a design will be more significant, so differences which might create a substantially different overall impression were the design less distinctive may not do so in such a case. Protection for a striking novel product will therefore be correspondingly greater than for a product which is only incrementally different from the prior art. But it is not sufficient to ask “is the alleged infringement closer to the registered design or to the prior art?” The tests remains “is the overall impression different?” This “is almost the equivalent to asking whether they are the same – the difference is nuanced, probably, involving a question of onus and no more”.
The registered design and the alleged infringement should be considered with a reasonable degree of care. The court must “don the spectacles of the informed user”. The comparison between the two designs has to be carried out at the same level of detail, which must be sufficient not only to identify the important features but also to characterise the impression which they give. The Court accepted that an impression is difficult to put into language, and commented that it is helpful to use pictures as part of the identification, but the exercise must be done. This was part of the rationale for overturning the judgment of Lewison J at first instance since, although he had characterised Procter & Gamble’s Registered Community Design appropriately, using terms such as “elegant”, “dynamic” and “integrated”, when it came to the alleged infringement he had not attempted to characterise it in such evocative terminology, contenting himself with enumerating features said to be too similar. Indeed, in his only real comment on the character of the alleged infringement he observed that it could not be found not to infringe merely because it was a poor quality or cheap imitation. This was precisely the wrong approach: an impression of poor quality is not the same as an impression of elegance, dynamism and integration, and should be sufficient to avoid infringement (though that is hardly likely to be a successful sales strategy in most cases!).
How different is different?
On the other hand, when considering how different a design must be from a registration in order to escape infringement the Court of Appeal elected not to impute the requirement, applicable to the test for registrability, that the two designs be clearly different. Their reasoning was that different policies are involved at the two stages. It is appropriate to restrict the grant of a monopoly right to designs which are shown “clearly” to differ from the existing design corpus, to ensure that design monopolies do not interfere with routine, minor, every-day design modifications – what patent lawyers call “mere workshop modifications.” But they held that no such policy applies to the scope of protection. It is sufficient to avoid infringement if the accused product is of a design which produces a “different overall impression.” If a design differs, that is enough – an informed user can discriminate.
This careful analytical judgment goes a long way to clarify how to approach the interpretation of the scope of any registered design under the new regime. It will no doubt be extensively scrutinised, quoted and criticised in all design cases before the UK courts over many years to come. It does not address every possible question that could arise from the new designs law, since not every issue had a bearing on the dispute between the parties in this case. But so far as the informed user and his or her overall impression are concerned, the Court of Appeal has set its stamp as to the correct approach to take, and any party which chooses to ignore it will do so at their own peril.