November 2007
How do You Compare Designs? - "it takes longer to say than to see"
The Court of Appeal has clarified the test for design infringement in this month’s decision in Procter and Gamble Co v Reckitt Benckiser (UK) Ltd. P&G sued Reckitt for design infringement over the design of their "Febreze" air freshener canisters which they had registered as a Community design. They claimed that that Reckitt were selling their Airwick air freshener in a similar canister. Reckitt countered by claiming that the design was invalid due to the lack of novelty, it being no different to any other canister (the prior art).
Lewison J in the first instance held that the design was valid as the relevant pieces of prior art created a very different overall visual impression from the registered design. Further the dominant features that made the registered design sufficiently novel (i.e. custom designed canister, surmounted by a trigger within a housing, designed to deliver a spray horizontally rather then vertically) were also found in the defendant’s canister. Reckitt appealed conceding that the design was valid but stating that the judge had erred in his simplistic analysis of the “dominant features”.
The Court of Appeal allowed the Appeal. The trial judge had failed to apply the “overall impression” of the registered design and instead focussed too much on the “dominant features”.
Jacobs LJ found that Lewison J had wrongly required the allegedly infringing product to give a clearly different overall impression. The Court of Appeal noted that Lewison J had been concerned that a cheap imitation of P&G’s product would escape infringement but clarified that such a concern was the realm of trade mark law.
Briffa’s comment
The threshold of originality required to register a design is not high. This is an advantage to those who create a large number of designs as it reduces cost and administration. However, the necessary offset of such a streamlined procedure is that the protection offered can be low. This case shows that an allegedly infringing copy must be very close to the registered design for infringement to be made out.
The case highlights a fundamental difference between the law of registered designs and the law of copyright. Whereas the comparison in registered designs is between the overall impressions created, copyright can look in detail at any similarity in an article to any substantial part of the original.
The case also highlights the problems associated with registering a complete product as a design and not registering individual aspects. The courts will assess the overall impression. If a company wishes to protect a distinctive part of a product then they may be wise to protect only that part of the product, disclaiming the rest, or even to consider trying to register a trade mark for that aspect once the shape has acquired distinctiveness in the market.
For more information contact Peter Mason