High Court Decision Provides Guidance on Interpretation of Registered Community Design Regulation

A recent case before the High Court Chancery Division (Patents Court) saw Mr. Justice Lewison consider an alleged infringement of a Registered Community Design ('RCD') and, in arriving at his decision that the RCD was both valid and infringed, he gave some valuable insight into interpretation of the Regulation relating to the RCDs.

The Products

The case concerned Proctor & Gamble (claimant) who had a RCD for their 'Febreze' spray canister, and who alleged that Reckitt Benckiser (defendant) were infringing their RCD by manufacture and sale of their 'Air Wick Odour Stop' air spray canister.

The registered representations of the Proctor & Gamble RCD are annexed below, together with views of the allegedly infringing Reckitt Benckiser product.

The P&G design was created having a trigger mechanism, which was new for air fresheners at the time, and included a distinctive shape having a narrow neck, an angled and elliptical top, and formed an integrated look which blended with the body of the container. The container itself was not a simple cylinder like conventional air freshener canisters, but narrowed at the neck.

The P&G design had won various design awards within the packaging community for its unique, distinctive and attractive aesthetics.

The RB product was produced based upon a design brief to produce a unique packaging for a premium product, but specifically not to infringe any design rights of P&G, since RB had become aware of the P&G product during compilation of the design brief.

The RB cap was design to fit a standard aerosol canister and have a trigger mechanism to activate the valve, with all dimensions within the 'footprint' of the canister. RB admitted that there was no design requirement for the product to have an elliptical top, or an angled head and that the RB product was “a common canister with a plastic cap stuck on top” that was “not in the same league [as the P&G product] as regards quality”.

Matters for Interpretation

In assessing the case, Mr. Lewison considered the following points of RCD law:

• Criteria for Registration

• For a RCD to be valid, it must be novel and have individual character. Novelty depends on there being no 'identical' design having been made available to the public at the relevant date, where 'identical' is defined as the same or differing only in immaterial details.

• Individual character depends on the design producing a different overall impression on an informed user than any other design which has been made available to the public. In assessing individual character, the Regulation states that the freedom of the designer to develop his design must be taken into account.

• Mr. Lewison stated that the test for validity is the obverse and reverse as that for infringement. Hence, the same test may be applied when assessing the two.

What is protected?

Mr. Lewsion stated that whether the whole or only a part of a product is protected, depends on what is depicted in the application for registration.

For example, for a monochrome line drawing, it will be only the shape and contours. Although RCD protection can extend to colours, if they are not depicted, they will not be protected.

Similarly, if only a part of a product is depicted, only that part will be protected.

It was also noted that although a product designation must be allocated on filing of RCD applications, these do not limit the products to which the scope of protection of the RCD extends. E.g. a RCD allocated 'aerosol cans' as a product category, could be infringed by a similarly shaped vase.

The Regulation defines the scope of protection as extending to any other design which does not produce on the informed user a different overall impression - this was agreed to be equal to asking whether the RCD and the alleged infringement produce the same impression. In assessing this, the degree of freedom of the designer in developing his design must be considered.

Informed User

This was decided to be a user of the class of product indicated in the registration, and is a specifically a 'user', not a 'designer' or a 'manufacturer'.

With regards to the limitation of the user being 'informed', Mr. Lewison, after some discussion, agreed with the opinion of Judge Fysh QC in Woodhouse UK v Architectural Lighting Systems [2006], and concluded that an informed user would not have an archival mind, and so would not be aware of each and every example of prior design, nor would he have extensive technical knowledge. However, he would have an awareness of the general body of prior design and product trend and availability, and some knowledge of basic technical considerations.

Freedom of the Designer

It was noted that the 'designer' who's freedom is to be considered in relation to validity, is that of the designer of the RCD, whereas the 'designer' to be considered in relation to infringement assessment, is that of the allegedly infringing product. However, in the present case, as the RCD and the alleged infringement are the same product, the degree of freedom of each designer is identical.

Mr. Lewison stated that external factors are to be considered in this regard, such as nature of product, or health and safety factors. However, internal factors should not be considered - e.g. commercial restraints such as to design a product so as to minimise the cost of re-tooling. Otherwise, the scope of protection would be dictated by the financial muscle of the alleged infringer, and the informed user cannot be expected to be aware of such internal financial constraints.

What is being compared?

The question arose as to whether the correct comparison should be of the RCD with the alleged infringement including all of its colours, or whether it should be the RCD against the alleged infringement stripped of all colours and graphics, and to compare shapes alone.

Mr. Lewison stated that “the scope of the registration limits elements of the RCD entitled to protection” and that “the registration mustÉbe the yardstick by which infringement is to be judged”.

“The registration holder is entitled to choose the level of generality at which his design is to be considered. If he chooses to general a level, his design may be invalidated by prior art. If he chooses too specific a level, he may not be protected against similar designs”.

“To allow features that are not the subject matter of the registration to play a part in the assessment of the overall impression would unduly restrict the scope of protection”.

Namely, as P&G registered their RCD with only black and white line drawings, it was their intention not to limit the design to any particular colour or surface graphics, and so to consider such features of the allegedly infringing article in assessing infringement, would be wrong.

Overall Impression

It was clarified that this criteria is not analogous to the Trade Mark notion of the imperfect recollection of an ordinary consumer. The person to be considered is not an ordinary consumer, but an 'informed user', and the risk of 'confusion' plays no part in the law relating to RCDs.

Mr. Lewsion stated that this factor is “what sticks in the mind after it has been carefully viewed”. This excludes the notion of constant darting between one design and the other, nor is it a catalogue of similarities and differences. Instead, an overall impression of the two designs is to be reached, and then to ask whether those overall impression differ.

Similarities and Differences

Mr. Lewison judged the dominant features of the RCD were the angled elliptical top culminating in the spray nozzle, the slightly curved trigger protruding from the angled underside of the top but remaining within the footprint of the base, the recessed neck opposite and around the trigger, the sloping shroud and, the cylindrical main body.

He found that despite differences between the two designs, all of the above dominant features were found in the RB product. Any differences were only relatively insignificant and did not detract from the same overall visual impression created by each of the two designs:

“The similarities are overwhelmingly greater than the differences”.

The differences in the quality of the respective products did not affect this similarity of overall impression.

None of the listed dominant features were dictated solely by function, nor were they products of external constraints on the designer's freedom.

On the assumption that the RCD was validly registered, Mr. Lewsion found it to have been infringed by RB's product.

Validity

RB had submitted some prior art to question the validity of the RCD, the first being a swiss riot spray canister, the second being a Chinese trigger-operated shampoo dispenser, the third being a UK patent application for a trigger-operated universal housing for dispensing fluid by a spray or aerosol. However, none were considered sufficiently similar to question the validity of the RCD in question.

Would consideration of colour have made a difference?

RB asked whether, had Mr. Lewison decided colours and graphics were to be taken into account, his decision would have differed.

Despite the colours of the RB product, it was concluded that the overall impression formed by the distinctive shape mean that even with colours being considered against the colourless RCD representation, the finding of infringement would still have resulted.

Summary

In his finding of the P&G's RCD being valid and infringed, Mr. Lewison provided some useful guidance into the interpretation of some quite ambiguous terms of the Regulation on Registered Community Design law.

It would be prudent to bear in mind these considerations of individual character, overall impression, design freedom, scope of protection and features for comparison, and the notional informed user, for anyone preparing and filing RCD applications in the future.

[This case in England was only one part of ongoing litigation between the two parties, and P&G have been successful in obtaining interim injunctions against RB preventing use of their Air Wick design in France, Austria, Brussels and Italy].

Alex Brown 01 Jan 2007

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