Snake or LIzard ?  Air fresheners meet design law !Proctor & Gamble Co.  v  Reckitt Benckiser (UK) Limited [2007] EWCA CIV 936

Facts

Procter & Gamble (P&G) owned a community registered design (CDR) for a trigger-operated sprayer for a household air freshener.  The CDR was set out in six pictures filed at the Community Design Registry.  P&G used the design in a number of countries for an air freshener called "Febreze".  In late 2005, Reckitt Benckiser (RB) launched its own trigger-operated air freshener product.  This product known as "Air Wick Odour Stop" consisted of an aerosol canister with a new plastic top which incorporated a trigger.

P&G launched a number of legal actions throughout the EU alleging infringement of its CDR in order to obtain interim injunctions, but under the Community Designs Regulation 6/2002 EEC ("the CD Regulation"), the English Courts had exclusive jurisdiction ultimately to determine issues of infringement and validity.  Accordingly P&G sued RB for infringement in the English Court in 2006.  RB counterclaimed alleging that the design was invalid.  At first instance, the English Court upheld P&G's claim finding that the design was both valid and infringed.  RB then appealed the infringement decision to the English Court of Appeal (CA).

Issues

To be infringed, the alleged infringing product has to create the same overall impression on a notional informed user as the impression created by the registered design itself.  In assessing the scope of protection for a design, the degree of freedom of the designer in creating the design needs to be taken into account by the informed user - (see Article 10 of the CD Regulation re the above statements).  The two key issues that therefore arose were (1) how to define who is an "informed user" and (2) how to assess "overall impression".  These issues had never before been addressed by an Appellate Court within the EU.

Decision

The CA overturned the High Court decision on infringement by finding that P&G's design whilst valid, had not been infringed.

As regards the first issue of the informed user, the CA concluded that the informed user is a notional person who would be aware of the types of designs which are in use in the relevant design field and also the extent to which the designer is constrained by a product's requirements.  In this case, for example, the Court decided that the informed user would know that for the product to work, it must be grippable so that the index finger could pull the trigger and the trigger must be shaped to fit the finger and have sufficient space behind it for it to be pulled.  The informed user is therefore someone who would take these kind of requirements into account when assessing overall impression.

As regards the second issue of overall impression, the registered design and the alleged infringing product need to be compared on a side by side basis.  This must be done with a reasonable degree of care at the same level of detail which is sufficient not only to identify the important features, but also to establish the impression provided by those features.  The comparison yardstick is that to avoid infringement, the alleged infringing product needs to produce a different overall impression.  There is no requirement for that difference to be "clear".  The Recital to the CD Regulation says that to be registrable, a design has to be "clearly" different from the prior art.  The CA held that the use of the word "clearly" in this Recital only applied to the issue of registrability of a design, not to whether or not it had been infringed.

In undertaking its comparison, the CA decided that the similarities between the products were "at too general a level " to produce the same overall impression on the informed user.  The CA adopted the approach of a previous Austrian Court decision which had found the following "clear differences" between the two sprayers:

1. The Febreze was smaller, had a slightly larger diameter and so looked more compact;
2. The head of the Febreze was shallower but also broader, so that the Febreze fitted the hand differently to the Air Wick;
3. In contrast to the Air Wick, the aerosol canister of the Febreze tapered upwards and the waist began lower than in the Air Wick;
4. The plastic pump in the Febreze went further down the aerosol canister than in the Air Wick;
5. The shape of the heads were different – the head of the Febreze was reminiscent of a snake's head, but the shape of the Air Wick head was more like a lizard's head.

Comments

The CA's decision suggests that the scope of protection for registered designs will be narrower than previously thought.  The "informed user" is not the same as the "average consumer" of trademark law.  He has more extensive knowledge than an average consumer, will be open to design issues and be fairly familiar with them.  "Different overall impression" means something different between looking at validity and looking at infringement.  For validity, the impression of the informed user has to be "clearly different".  For infringement, it only has to be "different".  This means that whereas a registered design application must be "clearly different" from the prior art, an alleged infringing product need only be "different" from the registered design to avoid infringement.

All this means that when reviewing whether a new design might infringe an existing CDR, the designer should start by identifying in the CDR those features that serve a functional purpose (i.e. where the designer is constrained by the product's essential functional requirements) and eliminate them.  Then he should review what is left and try and capture the overall impression.  He should ask what is the overall message being given out by the CDR?  The designer should then carry out the same process with the prospective new design in order to effect a comparison.  He should ideally try and ensure that the new prospective design has obvious and striking differences from the CDR which are capable of being listed, rather like the examples set out above. 

For further information please contact : Nick Rudgard