Design infringement and validity issues clarified by High Court

In Procter & Gamble Company v Reckitt Benckiser (UK) Limited, the High Court of England and Wales has outlined the approach to be taken in determining infringement and validity of a registered design.

Procter & Gamble Company (P&G) has a Community registered design relating to the packaging for domestic air spray fresheners (sold by P&G as Febreze, and having a trigger-operated spray). It alleged this design was infringed by Reckitt Benckiser (UK) Limited's Air Wick Odour Stop product packaging. P&G had succeeded in obtaining preliminary relief in parallel cases in other EU jurisdictions (Austria, Belgium, France and Italy). This decision was the full trial of the issues of infringement and validity.

Registered designs can protect the whole or part of a product, and can protect colours and materials, as well as shape and contour. The court rejected Reckitt's argument that the colours and graphics of the alleged infringing packaging should be taken into account when comparing the "overall impression" given by the Air Wick product to that created by the line drawings of the registered design. The court held that what was protected depended on what was depicted in the application for registration. In the case of a line drawing, what is relevant for the comparison is likely to be shape and contours. Similarly, if the design shows only a part of a product, it is only that part that will be relevant.

The court also considered the notional informed user, by reference to whom both validity and infringement are determined, the degree of familiarity he should be deemed to have of designs in the relevant field, and the degree of care he should be deemed to exercise in effecting the comparison. Based on this decision:

• the 'informed user' is deemed to be aware of the general body of design in the relevant field, but not each and every example of it. The court reviewed four Office for Harmonization in the Internal Market (OHIM) decisions and found them largely consistent with the UK decision of Woodhouse UK v Architectural Lighting Systems [2006] RPC 1 in which the informed user was something more than the "average consumer" and should be deemed to have "some awareness of product trend and availability", but not an "archival mind";
  
  
• the informed user should not take into account subjective factors, (eg, the resources available to the designer or the desire to use an existing production line); and
  
  
• to determine what "overall impression" the designs would leave on the informed user, the court should identify that which "sticks in the mind" after the designs have been carefully reviewed.

The court's analysis of the OHIM decisions also suggests that when considering the technical and functional constraints on the designer, the informed user's awareness will take account of the complexity of the design field: in more technical fields a relatively low level of sophistication may be expected.

In deciding the case, the court listed what it considered to be the dominant features of the P&G design, finding that all these features were in the Air Wick canister and top, and that none were solely dictated by function. It also listed a number of differences, but concluded that they did not detract from the overall visual impression created by the two designs, holding that "the similarities between the two are overwhelmingly greater than the differences". In contrast, it found the prior art designs relied on all created a very different overall visual impression from the registered design.

The court held that expert evidence may equip the court with knowledge of an informed user in the relevant field. Beyond this, any expert evidence was considered unlikely to be helpful.

Vanessa Marsland, Clifford Chance LLP, London