www.bristows.com Registered Community Design (RCD) Article It's

Registered Community Design (RCD) Article
It’s Air breeze for Procter & Gamble!
On 13 December 2006 Mr Justice Lewison handed down his judgment in Procter & Gamble v Reckitt
Benckiser ruling that the packaging of Reckitt Benckiser's “Air Wick Odour Stop” for domestic air
fresheners infringed Procter & Gamble's Registered Community Design No.000097969 for the
packaging of “Febreze” air freshener and that the design was valid. This case is important as it is the
first UK case concerning the scope of Registered Community Designs (“RCDs”) and demonstrates that
they are a powerful weapon in the IP armoury.
No.000097969-0001 (representations of the design)
Background Facts
Procter & Gamble (P&G) and Reckitt Benckiser (“RB”) are competitors in the domestic air freshener
market. P&G’s leading brand, “Febreze” is sold in the United States of America and many European
countries including the UK. RB is the owner of the “Air Wick” brand which is also a market leader.
In May 2002 P&G developed a new package for Febreze to make the packaging more distinctive. The
design comprised a trigger-operated spray mechanism on top of a custom designed canister.
Pressure on the trigger released the spray and the new angled top made the hand grip of the
container easier to use. The design of the package was registered as a RCD (“the Design” seen
The Design was well received within the packaging community and won several awards for
innovation. The principal innovation in the design was the mechanism of release of the spray. Prior
to the Design, it was conventional for aerosol air fresheners to deliver a spray vertically by pushing a
button on the top of the canister. The trigger-operated mechanism was a new concept for air
fresheners and operated by expelling fluid horizontally. The Design was chosen from several
candidates because it had a very distinctive and aesthetically pleasing integrated look with its narrow
neck and its angled and elliptical top.
In 2004 RB decided to create a sub-brand within the Air Wick brand, later to be named “Odour Stop”.
The designers were given a marketing and technical design brief. The Judge found that the RB
design team were aware of the P&G Design but also had been directed not to infringe any IP rights
belonging to P&G.
In the proceedings, P&G alleged that the package for the Air Wick Odour Stop (depicted above)
infringed the Design. RB denied infringement and alleged that the Design was invalid in light of
several prior art designs. A “squeeze” argument between infringement and validity was run – RB
arguing that if the Design was of such broad scope that it covered its product, it had to be invalid in
light of the prior art designs.
Overview of the Registered Community Design Regime
The Registered Community Design regime was created pursuant to Council Regulation 6/2002 and is
administered by OHIM in Alicante. Processing for RCDs began in 2003 and the regime is now the
second most popular design registration system in the world (after China). The scope of potential
registration is very broad. A “design” according to the Regulation is defined as “the outward
appearance of a product or part of it, which results from the lines, contours, colours, shape, texture,
and/or materials or ornamentation of the product”. A “product” is any industrial or handicraft item,
including packaging and get-up.
Applications for RCDs are not subjected to substantive examination. They are thus quick and easy to
obtain. Many IP-focussed companies have already amassed substantial portfolios of RCDs.
Although such matters are not assessed during prosecution, the law provides that for a design to be
validly registered it has to be new and possess individual character when compared to prior art
designs. To possess individual character, a design should create a different overall impression from
the prior art taking into account the degree of design freedom of the designer in developing the
design in question.
The owner of an RCD is entitled to object to the use of designs by third parties which do not create a
different overall impression on the informed user taking into account design freedom.
The Judgment
In his judgment, Lewison J. addressed several issues regarding the scope of RCDs. This was the first
time that an English Court had been tasked with deciding the scope of an RCD although the Judge
was able to derive some assistance from judgments from other European Courts and from decisions
of OHIM’s cancellation division.
Scope of protection of RCDs
Lewison J held that the scope of protection depended on the depiction in the application for the RCD.
For example, where a monochrome line drawing was registered, the Design was taken to be the
shape of the contours of the product. He noted that while applicants had to identify the products to
which a design would be applied, Article 36(6) of the Designs Regulation provided that this did not
affect the scope of protection. Thus, a registration for a design of a spirits bottle could be infringed
by a key-ring or a hot air balloon made according to the design.
Identity of informed user
The questions of infringement and individual character are judged by the standard of the “informed
user”. The concept of the “informed user” was introduced in the RCD regime and legislation
harmonising designs law throughout Europe a few years ago. Following the approach taken by His
Honour Judge Fysh QC in Woodhouse UK v Architectural Lighting Systems (a case in relation to a UK
national registered design) which was held to be in line with decisions from OHIM, Lewison J. held
that the “informed user” was a user of sprayers and not a designer of sprayers. This user would
however not be an ordinary consumer but rather would have some basic awareness of product trends
and technical considerations. The informed user would thus have an awareness of the design
freedom available for the design in question.
Assessing infringement - Overall impression
The judge agreed with RB’s approach to compare the designs in respect of their various features
taken individually and in respect of the weight or importance of the various features according to
their influence on the overall impression and to identify similarities and differences. He said the
overall impression of the design should be a visual impression and the impression was that which was
left in the mind of the informed use after the design carefully viewed. The informed user was then to
consider whether those overall impressions differed.
Following earlier decisions from OHIM, the Judge held that the correct approach was to confine the
comparison to the features of the design that were the subject of the registration. The registration
had to be the yardstick by which infringement was to be judged. Given that there was nothing in the
Design limiting the colours, the correct approach would be to eliminate colour from the alleged
infringement. A comparison should be between the design, as registered and the comparable portion
or element of the allegedly infringing item. The proprietor of the design was entitled to choose the
level of generality at which his design was to be considered. If he chose too general a level, his
design might be invalidated by prior art. If he chose too specific a level he might not be protected
against similar designs. To allow features that were not the subject matter of the registration to play
a part in the assessment of the overall impression would unduly restrict the scope of the protection.
In this case as there was nothing in the Design that limited the colour, colours and graphics would
not be taken into account but the overall impression formed by a distinctive shape would be. The
similarities between the overall visual impressions created by each of the two designs were
overwhelmingly greater than the immaterial differences and were deemed to be identical for the
purposes of the Regulation.
Lewison J. found that the dominant features of P&G’s design were;
Angled, elliptical, sloping top, culminating in the spray nozzle;
Slightly curved trigger protruding form the angled underside of the top, but remaining within
the footprint of the base;
Recessed “neck” opposite and around the trigger;
Sloping shroud intersecting with the body of the canister and forming a curve at the rear and
Cylindrical main body.
Having looked at the infringement questions in detail, the Judge dealt with the question of validity in
a succinct manner. He assessed 3 prior art designs but considered that none of the designs served to
deprive the Design of individual character and that the squeeze did not succeed.
Prior to the introduction of the RCD regime and the associated harmonisation of European designs
law, designs were often seen as the poor relation of the IP world. This analysis changed in 2003
when the new regimes were introduced. The fact that RCDs are powerful rights has been confirmed
by the judgment of the English High Court in Febreze.
Given the lack of substantive examination of RCD applications and the popularity of the regime, it
seems inevitable that there will be scope for many legal battles in the future. However the Febreze
case demonstrates clearly that brand owners should consider RCDs as part of their IP portfolio along
with the protection offered by copyright and trade marks.
Danielle Onona and Brian Cordery
22 December 2006