Designed to be different

Monday 31st December 2007

Matthew Howarth, intellectual property partner

The Court of Appeal has recently handed down an important judgment on how registered designs should be considered when assessing infringement claims. Its ruling has been seen as a narrowing of the scope of protection for designs and provides a useful checklist for how designs should be considered when testing to see if they infringe.

The case related to a dispute between Proctor & Gamble who own the design to the spray canister of its air freshener called FEBREZE. It complained that the canister design for a product sold by Reckitt Benckiser called the AIRWICK ODOUR STOP was too similar to its own design and infringed its Community Registered Design rights.

The problem often encountered when considering design rights is that much of the assessment of the “accused” product with the “original” product involves a degree of subjective assessment. Advisors are often asked: ‘how close can a design get to the original without infringing design rights?’

The Court of Appeal has helped in this regard and set out certain guidelines when seeking to compare designs for the purpose of infringement claims. The test to be adopted is whether the accused design when considered through the eyes of an informed user creates a different overall impression from that of an original.

A Community Registered Design can last up to 25 years and grants protection throughout all EU Member states. The registration will protect the appearance of the whole or part of a design if it is new and possesses individual character (defined as being a character that when considered against designs that were previously available to the public, creates upon an informed user a different overall impression to those designs that were previously available).

The owner of a Community Registered Design has the exclusive right to sell products made to that design. The court has outlined the steps that must be taken when comparing an accused design with an original design to assess whether it infringes. The test is whether an accused design creates a different overall impression upon an informed user when compared with the original design. The obvious questions are who is an informed user for the purposes of that test and how do you assess what the overall impression is?

The court has ruled that the notional informed user is fairly familiar with design issues. They are not taken as average consumers but will be considered to be able to appreciate certain design issues (such as the extent to which functional aspects limit the scope of the design.)

To this extent the notional informed user will be more discriminating. To a degree this narrows the scope of protection offered as the test to be adopted is somewhat higher than a notional consumer who does not have such knowledge.

The test of overall impression is one that involves a careful comparison of the two designs together. This involves looking at not only the important features of the designs but also the impression that they both give that notional user. When undertaking this consideration the court will take into account the degree of freedom that a designer has in designing the product.

If there are limited ways in which product might be designed, then the scope of protection will in turn be limited. Smaller differences between the accused and the original product may be sufficient to create a different overall impression and so avoid infringement.

Consideration must be given not only to the particular aspects of the design, but also to what sort of overall impression is given by that design – e.g. is it sleek or minimalist? Does it have an overall curved or angular impression? The test is not whether there are exact similarities on the micro scale, but what overall impression is gained by both designs and are they similar?

In this case the court held that an assessment of both designs would not create on an informed user a similar overall impression. The FEBREZE canister was considered to be smaller, more compact and the head of the sprayer was considered to be shallower. The design of the AIRWICK product did not infringe. The similarities between both products were considered to be too general and there was a different overall impression when a comparison was made.

The case is useful as it confirms that the comparison should be made through the eyes of someone who is familiar with design issues and would be able to approach the comparison with more of a critical eye and would be able to appreciate small differences in the designs and appreciate that some designs are restricted because of the use that the product is to be put.

Although this still requires a degree of subjective assessment it does help to identify who the notional user is and how an overall impression should be considered. It still leaves competing designers with a problem over certainty when considering how similar their designs can be to the existing corpus of designs, but it is a helpful start when advising clients on what they should be taking into account when looking at the competition.

Gordons regularly advises on design issues. For further information contact Matthew Howarth on 0113 227 0100 or email