NEWSFLASH

Procter & Gamble v. Reckitt Benckiser

Procter & Gamble's December 2006 win against Reckitt in the first High Court case concerning the registered Community design right was a boon to what some view as a second-class IP right. 

But the Court of Appeal's reversal of Lewison J's judgment on 10 October 2007 puts the value of the registered Community design right (and the corresponding unregistered right, for which the same criteria discussed below apply) back into question, in particular as against inferior look-alikes.
 

The facts
 
The case pitched Procter & Gamble's registered Community design for the canister of its Febreze air freshener against Reckitt's competing Air Wick Odour Stop product, both of which contain a horizontal trigger-operated spray mechanism instead of the conventional vertical button mechanism (see the pictures below).
 
The High Court held that Procter & Gamble's design was sufficiently different from the prior art (including a Swiss riot spray) to be validly registered, and this was not overturned on appeal.  The key question on appeal was whether the Judge had applied the correct test in finding that Reckitt's product did not produce a "different overall impression" from, and therefore infringed, Procter & Gamble's design.
 
The judgment
 
Jacob L.J. held that the Judge had made a number of errors in principle, and that the correct test included the following criteria:
 

1.		A product does not need to produce a "clearly different" overall impression to escape infringement - a "different" overall impression is enough.  (Conversely, a design can only be validly registered if it "clearly differs" from the prior art.)
2.		The notional "informed user" on whom the different overall impression must be produced is the average user (as opposed to designer) of other similar products (in this case sprayers generally, not just air fresheners or domestic sprayers) who is deemed to be "fairly familiar" with design issues.  The informed user of design law is more discriminating than the "average consumer" of trade mark law.  What matters is what strikes the mind of the informed user when the overall impression is carefully viewed, not what sticks in the mind after it has been carefully viewed.  The possibility of trade mark-type "imperfect recollection" has a limited part to play in this exercise.
3.		Protection for a striking novel product will be correspondingly greater than for a product which is incrementally different from the prior art.  However, smaller differences will be sufficient to create a different overall impression where the freedom of design is limited.
4.		The "overall impression" of both the registered design and the alleged infringement must be identified with care, and at not too broad a level of generality - the final question being whether the overall impression of each is different.
5.		Importantly for cases involving inferior look-alikes, a "poor quality" imitation, which does not convey the same overall impression as the original will not infringe.
6.		The key issue is what the products look like, and the place for evidence in registered design cases is accordingly very limited.  Expert evidence is very unlikely to be useful (although a key criteria in unregistered design cases) and evidence about whether or not the defendant copied is irrelevant.  Nor does it matter whether the claimant "spent a fortune" in arriving at the design or whether it was thought of "in the bath".  However, the reaction of the public and trade to the design (for example, as evidenced by any awards won) can be of secondary assistance.

Applying these criteria, Jacob L.J. held that the similarities between the products were at too general a level to produce the same overall impression on the informed user, and that Reckitt's product therefore did not infringe.  He noted a number of differences between the products that had also been identified by the Higher Provisional Court in Vienna (which had found against Procter & Gamble in parallel Austrian proceedings), including that the head of the Febreze sprayer was reminiscent of a snake's, whereas that of the Airwick sprayer was like a lizard's.
 

Implications
 
Pending any appeal to the House of Lords (yet to be confirmed at the time of going to press), an important question arising from this judgment for the value of the Community design right, and in look-alike cases in particular, will be to what extent the impression of being a "poor quality" imitation will in and of itself be sufficient for a product to avoid infringement in the absence of other significant differences with the original.
 
In seeking to establish that the products produce the same overall impression, claimants will accordingly need to be careful not to fall into the potentially fatal trap of characterising the alleged infringement as an "inferior" look-alike.
 
The judgment also reinforces the importance of filing suitably broad design representations at the initial registration stage: the more general the level of representation, the broader the extent of protection - subject, however, to making the representations sufficiently specific to avoid invalidation by any prior art.

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