Procter & Gamble Company v Reckitt Benckiser (UK) Ltd

For infringement of a registered Community design, the question under Article 10(1) of Council Regulation EC 6/2002 is whether the accused design gives the informed user a different overall impression. It need not give a clearly different impression.

The informed user is alert to design issues, familiar with the relevant design corpus, and more discriminating than the average consumer in trade mark law. The court must assess both designs carefully, identify each overall impression at an appropriate level of specificity, and then compare them. Imperfect recollection has only a limited role. Functional constraints and the degree of design freedom affect the assessment, so smaller differences may suffice where freedom is limited.

The claimant, Procter & Gamble Company, owned registered Community design No 000097969-0001 for a sprayer used for its Febreze air-freshener product. Reckitt Benckiser (UK) Ltd marketed an Air-Wick spray canister.

Lewison J held that the design was valid and that the Air-Wick product infringed it: [2006] EWHC 3154 (Ch). Reckitt appealed both findings. The central issue on infringement was whether the Air-Wick product produced on the informed user a different overall impression from the registered design.

1. The appeal was allowed on infringement and dismissed on validity. Jacob LJ gave the reasons, with which Dyson LJ and May LJ agreed. The Air-Wick product produced a different overall impression from the registered design. The finding of infringement therefore could not stand.

2. Under Article 10(1) of Council Regulation EC 6/2002, an accused design escapes infringement if it produces a different overall impression on the informed user. The requirement that a design must clearly differ from the existing design corpus concerns registrability and does not impose a requirement of clear difference for non-infringement.

3. The informed user is not the average consumer of trade mark law. That user is aware of generally known designs in the relevant design corpus, is alert to design issues, and can make a reasonably careful visual assessment. The user also understands functional features and the limits that they impose on a designer's freedom. Imperfect recollection may have a limited role, but the inquiry concerns the impression made when the designs are carefully viewed.

4. The comparison must identify the overall impression of the registered design and of the accused product at the level of generality appropriate to that informed user. It is insufficient to reduce a distinctive design to overly general dominant features, or simply to ask whether the accused product is closer to the registration than to prior art. Design freedom affects scope: where it is limited, smaller differences can create a different overall impression.

5. The judge had erred in principle by not applying his earlier findings about the registered design's smooth, integrated and dynamic appearance; by failing to state the overall impression of the accused product; by using features at excessive generality; and by implicitly requiring a clearly different impression. Those errors entitled the Court of Appeal to make its own assessment. The products' shared features were too general to produce the same overall impression.

6. The validity challenge failed. The prior art demonstrated how innovative the registered design was and did not undermine its individual character.

• Court of Appeal (Civil Division) In [2007] EWCA Civ 936, allowed Reckitt's appeal against the infringement finding but dismissed its appeal against validity.
• High Court of Justice, Chancery Division (Intellectual Property) Lewison J held the registered Community design valid and infringed: [2006] EWHC 3154 (Ch).