| EUROPEAN COMMUNITY — Registered Community Design — Infringement — Aerosol sprayers delivering air freshener — Whether producing a different overall impression on informed user — Council Regulation (EC) No 6/2002, art 10
The Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936
CA: May, Dyson and Jacob LJJ: 10 October 2007
In considering an allegation of breach of a registered Community Design, the court should adopt the standpoint of an “informed user” who was more familiar than the average consumer with design issues. Rather than relying on expert evidence, the court should look closely at the registered design and the allegedly infringing article and ask whether it produced a different overall impression.
The Court of Appeal so held allowing an appeal on infringement by the defendent, Reckitt Benckiser (UK) Ltd, from a decision of Lewison J [2006] EWHC 3154 (Ch) that Community design No 000097969-0001 relating to a “Febreze” aerosol canister and registered to the claimant, The Procter & Gamble Co, was valid and had been infringed by the design of the defendant’s “Air-Wick” canister.
JACOB LJ said that art 10(1) of Council Regulation (EC) No 6/2002 required the court, when considering whether a registered design had been infringed, to “don the spectacles” of an “informed user”. This notional individual was more discriminating than the “average consumer” of trade mark law and was fairly familiar with design issues. The point of protecting a design was to protect that design as a design. So what mattered was the overall impression created by it: would the user buy it, consider it or appreciate it for its individual design? That involved the user looking at the article, not half-remembering it. The motivation was different from purchasing or otherwise relying on a trade mark as a guarantee of origin. Things which might infringe a registered trade mark might not infringe a corresponding registered design, though the reverse was not the case. The effect of art 10(2) was to narrow the scope of protection. Smaller differences would be enough to create a different impression where the designer had a limited degree of choice a designer in creating his design. The “overall impression” test was inherently rather imprecise but some general observations could be made. (i) The test was “different” not “clearly different”. (ii) The notional informed user was “fairly familiar” with design issues. (iii) Protection for a strikingly novel product would be correspondingly greater than for a product which was incrementally different from the prior art, though different enough to have its own individual character and thus be validly registered. (iv) It was not sufficient to determine whether or not there was infringement by asking whether the alleged infringement was closer to the registered design than to the prior art. The test was “is the overall impression different? (v) It was legitimate to compare the registered design and the alleged infringement with a reasonable degree of care. (vi) The court must identify the overall impression of the registered design with care, and (vii) adopt the level of generality which would be adopted by the notional informed user, then (viii) do the same exercise for the alleged infringement. (ix) Finally, the court should ask whether the overall impression of each was different. The judge had erred in principle in failing to apply the overall impression of the registered design and the accused product and failing to state what his overall impression of the alleged infringement was. The impression that would be given to the informed user by the “Air-Wick” product was different from that of the registered design. The similarities between the two designs were at too general a level for one fairly to say that they would produce on the informed user the same overall impression. On the contrary that user would get a different overall impression.
DYSON and MAY LJJ agreed.
|
