The Court yesterday said that there was sufficient difference of detail between the design of P&G’s Febreze product and Reckitt Benckiser’s Air Wick Odour Stop that the Air Wick container does not infringe P&G’s registered Community design.
In the judgment, Lord Justice Jacob also clarified how the courts should assess what constitutes the “overall impression” of a product and who is the “informed user”.
These are key terms in the 2002 Regulation on Community Designs. Article 10(1) of the Regulation says that “the scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression”.
But until now, there has been little case law to clarify how these terms should be defined.
“Today’s decision is hugely important for all brand owners and all those involved in consumer product industries where the use of designs is paramount,” said Lorna Brazell, a partner with Bird & Bird, who represented Reckitt Benckiser. “We now have for the very first time clear guidance on what protection an original design can attract and significantly a systematic approach in order to get there.”
But Richard Willoughby of Howrey, who advised P&G in the litigation, denies that there is now clarity on the overall impression test.
“Certainly there are useful pointers, such as who the informed user is, a list of steps that should be taken in the assessment, and that there should be broader protection for innovative designs,” he said. “However as the Court points out, this is an inherently imprecise and subjective assessment – what may seem to one person reasonably to create a different overall impression may to another not do so.”
He added: “So it was in this case – unlike the UK and Austria, the French Court of Appeal upheld its lower court's finding of infringement, which several other courts in Europe also found. While all but the UK were on an interim basis, this is a semantic difference. All of these courts specifically considered the key question – whether or not the overall impression was the same – and gave reasons. Absent clear guidance as to how “overall impression” should actually be assessed, which may be difficult and probably has to come from the ECJ ultimately, it is hard to divine any clear guidance on a pan-European basis as things stand.”
The dispute dates back to 2002, when P&G developed a new package for Febreze to make it more distinctive. The design comprised a trigger-operated spray mechanism on top of a custom-designed canister. Pressure on the trigger released the spray. The new angled top made the hand grip of the container easier to use.
In 2004, Reckitt Benckiser created its own new brand of air freshener called Odour Stop and asked its design team to develop a new canister for it. P&G complained that the design infringed the registered Community design it had for its own Febreze product and sued Reckitt Benckiser in February 2006.
Proceedings began in the UK in the High Court but P&G also sought interim injunctions in countries including France, Belgium, Italy, Austria and Spain. In November 2006, the High Court ruled in favour of P&G.
In his decision, Mr Justice Lewison said that the overall impression of the design should be the visual impression that was left in the mind of the informed user after the design had been carefully viewed.
Reckitt Benckiser appealed and the Court of Appeal has now overturned the lower court’s ruling.
On the question of the “informed user”, Jacob said that he agreed with the Higher Provisional Court in Vienna when it ruled in interim injunction proceedings that P&G’s design is not infringed by the Air-Wick product.
In that case, the Court said: “The ‘informed user’ will, in the view of the Appeals Court, have more extensive knowledge than an ‘average consumer in possession of average information, awareness and understanding’ (see 4 Ob 239/04g), in particular he will be open to design issues and will be fairly familiar with them (Bulling/Langöhrig/Hellwig, Gemeinschaftsgeschmackmuster [Community designs], Rz 56).”
Jacob concluded: “So the informed user is alert to design issues and is better informed than the average consumer in trade mark law. Things which may infringe a registered trade mark may not infringe a corresponding registered design.”
Jacob then went on to consider the term “overall impression”, saying that the test is “inherently rather imprecise”. He ruled that the lower court judge had made six errors in assessing the overall impression of the two designs. In particular, he had erred by “approaching the ‘dominant features’ of the design at too general a level, a level such as not to convey in words the overall impression which would be given to an informed observer”.
He again cited the Higher Provisional Court of Vienna, saying that the Austrian Court had “put it well” when it said: “In reality, even though the same features are found in both, there are clear differences between the two sprayers resulting from the different mode of their execution ... The shape of head too is different: while the head of the Febreze sprayer – to draw a comparison from the animal kingdom – is reminiscent of a snake’s head, the shape of the Airwick sprayer head is like a lizard's head.”
Brazell said that this consideration – the way that a design suggests the “personality” of the product – is key for product designers and their legal advisers.
“People need to consider what’s the style, what’s the imagery – basically, what’s the message. But that should be quite straightforward for designers, because that is how they approach their job already.”
Brian Cordery of Bristows told MIP Week the Court set out a helpful nine-pronged test to assess similarity of designs: “The test essentially boils down to three key stages: assess the overall impression given by the registered design in question; assess the overall impression given by the accused product; and assess whether the overall impressions are the same or different.”
In his ruling, Jacob also criticized the use of expert witnesses in design cases and advised his fellow judges to consider whether litigants should be allowed to submit evidence: “[T]he court should know precisely to what areas that expert evidence will be directed. If blanket permission is given, each side feels compelled to get an expert who then has to say something. What is then said has to be read by the other side. Thereby time and cost to no particular use is expended.”
Reckitt Benckiser was advised by Bird & Bird partners Lorna Brazell and Morag Macdonald and barristers Henry Carr QC and Hugo Cuddogan. Richard Willoughby of Howrey and barristers Roger Wyand QC and Dominic Hughes acted for P&G. P&G does not intend to appeal.
The April 2007 issue of Managing IP contains an article by Cordery about the use of Community design rights.
