Court of Appeal reverses Air Wick design decision

The Court of Appeal for England and Wales has reversed the High Court decision in Procter & Gamble Company v Reckitt Benckiser (UK) Limited ([2006] EWHC 3154 (Ch)) and clarified the degree of protection available to an original design.

In 2006 the High Court had held that the packaging of Reckitt Benckiser (UK) Limited's Air Wick Odour Stop infringed Procter & Gamble Company's validly registered Community design for the packaging of Febreze.

Procter & Gamble's product, Febreze, is packaged in a custom-designed canister surmounted by a trigger within a housing. At trial, the High Court agreed with Reckitt Benckiser that the overall impression of a design is what "sticks in the mind" of consumers, but found that the Air Wick design infringed Procter & Gamble's Febreze design. On appeal, Reckitt Benckiser submitted that since the judge had stated that the overall impression of each product was different, he ought to have found that there was no infringement.

Giving judgment for the Court of Appeal, Lord Justice Jacob stated that there was sufficient difference of detail between the two designs for Reckitt Benckiser's Air Wick design to be regarded as non-infringing.

Allowing Reckitt Benckiser's appeal on the issue of infringement (but not on the issue of validity), the Court of Appeal stated the following:

• Infringement is avoided where the design of the allegedly infringing product gives a different overall impression; however, 'different' does not mean 'clearly different', as the trial judge had thought.
  
  
• The impression must be that of the notional "informed user", who is taken to be "fairly familiar" with design issues.
  
  
• Protection for a striking novel product would be correspondingly greater than for a product which is only slightly different from its predecessors.
  
  
• In comparison of designs (unlike comparison of trademarks), there was no great need to take into account the imperfect recollection of the viewer.
  
  
• The overall impression of a registered design - and of an allegedly infringing product - must be established with care.
  
  
• If the overall impression of each design is different, there is no infringement.

In this case the high Court did not apply its own impressions, but applied a 'stick in the mind' test, instead of the more appropriate 'what would impress now' test. The judge also approached the dominant features of the design at too general a level.

Lord Justice Jacob found that a poor-quality imitation would escape infringement. If a poor-quality imitation did not convey the same impression as the original, it was because of its own design merits.

Arguably, the drafters of the Community design right legislation did not intend that courts submit themselves to such a complex set of mental exercises in order to reach the decision which most people would reach on the basis of subjective evaluation or intuition - that the alleged infringing product either does, or does not, look as if it has been copied from the registered design.

Jeremy Phillips, IP consultant to Olswang, London