TOWARDS A HARMONIZED APPLICATION OF DESIGN LAW: THE PROCTER & GAMBLE CASE

The Procter & Gamble Company (P&G) holds the following Registered Community Design (RCD) used for the company's “Febreze” freshener for the following sprayer:



The design which was published in February 2004, was the result of a process launched in May 2002 by the company to develop a new package for Febreze. It was decided to develop a design with a so-called “trigger concept”, by which the fluid would be expelled horizontally instead of vertically (as had been the case until then in the marketplace). The design, once developed, registered and marketed, won several design awards.

Procter & Gamble sued Reckitt Benckiser before the High Court of England and Wales (designated as a Community Designs Court), for infringement of the RCD, alleging that Reckitt's “Air Wick Odour Stop” (launched towards the end of 2004) sprayer infringed its design.



The Court found on 13 December 2006 that the RCD was validly registered and had been infringed. This judgment is one of various judgments involving both companies: P&G obtained interim measures against the defendant from the Vienna Commercial Court , the Brussels Court of First Instance, the Evry Commercial Court and a court in Milan , prohibiting the use of the Air Wick design.

The judgment describes when a RCD is infringed, highlighting different legal points which are of interest for practitioners.

In doing so, the Court, with the assistance of the parties' counsels, found “useful guidance” in several decisions of the Invalidity Division of the OHIM, quoting at least five of those decisions, including the first decision issued in April 2004 and employing as part of its motivation several approaches endorsed by the OHIM.

In doing so, it provides an example of a tendency towards harmonized enforcement of the Community design legal framework.

First, the Court analyses the different conditions for protection (novelty and individual character), rightly stating that the test that applies to determine whether there has been a valid registration is the same as applies in order to determine whether there has been an infringement. This is the result of the Community Design Regulation (CDR) “overall impression” test contained in Article 6 (individual character) and Article 10 (scope of protection of a RCD).

Secondly, the Court rightly underlines that scope of protection is not limited by the product to which the design is applied, in conformity with Article 36(6) CDR. Both parties in Court agreed that if a design is registered for an aerosol, it could be infringed by a vase.

Thirdly, the Court, in analyzing whether the alleged infringing design produced the same impression as the RCD, it identified as “informed user”, the user of sprayers, not a designer or a manufacturer. In this regard, accepting that the notion of “informed user” is a legal construct, and rejecting that extensive technical knowledge is necessary, since, in any case, it would be very unlikely to exist in reality.

Fourthly, as regards the designer's degree of freedom, the judge considered this to be an objective test which applies to all designers, without including, for example, internal commercial constraints.

Fifthly, since the scope of the registration limits the elements of the RCD entitled to protection, the registration must be the “yardstick by which infringement is to be judged”. In this respect, the RCD, for example, was not limited to certain colours.

Sixthly, the correct approach to determine the overall impression consists of identifying similarities and differences between the RCD and the infringing design. The judge, considering that the test for validity and the test for infringement are the same, followed the OHIM's approach. The Court found, after such determination, that both designs had the same overall impression, since the similarities are verwhelmingly greater than the differences. By reproducing the photographs of both designs in annex to the judgment, the Court found that the comparative photographs demonstrate better than words can do the similarities in visual impression between the two.

Finally, the Court considered the validity of the RCD, in light of different prior designs invoked by the parties (a Swiss patent, a Chinese design and a UK application). The Court concluded that the RCD has a different overall impression, and thus declared it valid and dismissed any invalidity argument thereof.

The case illustrates, on the one hand, how effective it is for major companies with a strong commercial presence within the European marketplace to obtain EU-wide protection for their designs. On the other hand, it illustrates the persuasiveness of the Office's decisions in the area of validity of designs It is of great importance for users of the Community design system that all instances applying the substantive rules of the CDR follow a coherent approach. The OHIM's guidance increases the coherence and the harmonization in the application of the CDR.

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