Procter & Gamble Company v Reckitt Benckiser (UK) Ltd

For Community design infringement, the comparison must be made between the registered design as depicted and the corresponding features of the alleged infringement. Features not included in the registration, such as unclaimed colours or graphics, should not ordinarily restrict protection. Features whose appearance is solely dictated by technical function are excluded, but that exception is narrowly construed.

The informed user is familiar with the relevant product sector, its recent design corpus and its basic technical characteristics, but need not possess extensive technical knowledge or an archival memory. Commercial constraints particular to a manufacturer do not reduce the objective degree of design freedom. The court must assess the overall visual impression after a careful comparison of similarities and differences, giving appropriate weight to the dominant features.

Procter & Gamble owned registered Community design No 000097969-0001 for packaging classified as sprayers. It alleged that Reckitt Benckiser’s Air Wick Odour Stop packaging infringed the design.

Reckitt Benckiser denied infringement and advanced a validity challenge. It contended that the differences between the registered design and earlier products, including a riot spray, a Chinese dispenser and the Contico housing, were insufficient to give the design individual character.

The central issues were the proper interpretation of the Community design regime, the identity of the informed user, the degree of design freedom, the features to be compared, the overall impression, infringement and validity.

1. Interpretation of the Regulation. The registered Community design was governed by Council Regulation EC 6/2002. Validity required both novelty and individual character. The infringement and validity inquiries were the obverse and reverse of the same test.
2. Scope of protection. Under Article 36, protection depended on what was depicted in the application. A monochrome line drawing would ordinarily protect shape and contours, not unrepresented colours or materials. The registration was the yardstick for infringement, and like had to be compared with like. The product indication did not limit the scope of protection under Article 36(6).
3. Technical function. Article 8 was narrowly construed. A feature was excluded only where its appearance was solely dictated by technical function. The relevant features of the registered design were capable of being designed differently while performing the same functions.
4. Informed user and design freedom. The informed user was a user of sprayers, rather than a designer or manufacturer. The user was familiar with product trends, recent availability and basic technical characteristics, but did not require extensive technical knowledge or an archival memory. The degree of design freedom was assessed objectively. External constraints could be relevant, but internal commercial constraints, such as an existing production line, could not reduce the degree of freedom.
5. Overall impression. The informed user should carefully compare the designs, considering similarities and differences and the weight of individual features, before forming an overall visual impression. The relevant dominant features were the angled elliptical top, trigger, recessed neck, sloping shroud and cylindrical body. Those features appeared in the Air Wick product. The differences were relatively insignificant and did not alter the same overall visual impression. Colours and graphics would not have produced a different conclusion.
6. Validity and result. The registered design was valid. The prior art relied upon produced materially different overall visual impressions and did not deprive the design of individual character. The registered Community design was therefore valid and infringed.