England and Wales High Court (Chancery Division) Decisions

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URL: http://www.bailii.org/ew/cases/EWHC/Ch/2006/3154.html
Cite as: [2007] FSR 13, [2006] EWHC 3154 (Ch), [2007] ECDR 4

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		Neutral Citation Number: [2006] EWHC 3154 (Ch)
		Case No: HC 06 C00362

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

Royal Courts of Justice
Strand, London, WC2A 2LL

13/12/2006

B e f o r e :

MR JUSTICE LEWISON
____________________

Between:

	THE PROCTER & GAMBLE COMPANY	Claimant
	- and -
	RECKITT BENCKISER (UK) LIMITED	Defendant

____________________

Mr Roger Wyand QC and Mr Dominic Hughes (instructed by Howrey LLP) for the Claimant
Mr Henry Carr QC and Mr Hugo Cuddigan (instructed by Bird & Bird) for the Defendant
Hearing dates: 29 and 30 November and 1 December 2006
____________________

HTML VERSION OF JUDGMENT
____________________

Mr Justice Lewison :

Introduction	1
The registered design	4
The development of the design	5
The process	5
The features underlying the design	7
Success of the design	10
The new Air Wick cap	11
The process	4
The result	19
The Regulation	21
Some matters of interpretation	24
Interrelationship between validity and infringement	25
What is protected?	25
Informed user	30
Design freedom	42
What is being compared?	44
Overall impression	51
Decisions in other European jurisdictions	58
Vienna Commercial Court	59
Brussels Court of First Instance	60
Evry Commercial Court	62
Law Court of Milan	63
The expert evidence	64
Similarities and differences	65
Do colours and graphics make any difference?	71
Validity	74
The riot spray	75
The Chinese design	76
The Contico housing	77
Result	79

Introduction

The protagonists in this case are both multi-national corporations whose business includes selling domestic air spray fresheners. Procter & Gamble's product is called "Febreze" and Reckitt Benckiser's is called "Air Wick Odour Stop". Procter & Gamble sell Febreze in the United States of America and in many member states within the European Union. In some of those markets (but not yet in the United Kingdom) Febreze is packaged in a custom designed canister surmounted by a trigger within a housing. Pressure on the trigger releases the spray. The design of the package is registered as registered Community design No 000097969-0001. Procter & Gamble allege that the package in which Air Wick Odour Stop is packaged infringes the registered Community design.

Mr Roger Wyand QC and Mr Dominic Hughes appear for Procter & Gamble; and Mr Henry Carr QC and Mr Hugo Cuddigan appear for Reckitt Benckiser. Both Mr Wyand and Mr Carr agree that this is a straightforward case. But there the agreement stops, because each of them says that the straightforward case is that their clients win.

Mr Carr also says that if his client's product would otherwise infringe the registered design, the differences between that product and the registered design are such that, in the light of pre-existing products and designs, the registered design must be invalid.

The registered design

The category of product to which the registered design was intended to be applied was described as "sprayers". Representations of the designs are reproduced below:

The development of the design

The process

In May 2002 Procter & Gamble's North American Febreze brand product development team were given the task of developing a new package for Febreze. The design was to incorporate three dimensional design elements in order to make the packaging very distinctive. Ms Naomi Nelson was in charge of the aesthetic appearance of the package; and Mr Christopher Bates was involved in its technical capability. Both gave evidence, which I accept. Jones Garrard, a UK design consultancy, were commissioned to come up with designs; and they were given wide freedom to develop their designs. They came up with ten designs, which were reviewed in the following month. It was decided to develop a design with what Ms Nelson described as a "trigger concept", which had generated interest. It is not easy to discern a trigger in any of the early prototypes. Jones Garrard then produced ten white foam models developing the selected design. These ten were whittled down to four. One of these four, designated "T", was the one that was ultimately selected for further development. This design went through several iterations and ended up as the registered design.

Mr Bates' involvement was on the technical side, to make sure that the design worked. He described the design as having been led by aesthetics rather than by technical considerations.

The features underlying the design

Up to this time it had been conventional for aerosol air fresheners to deliver a spray vertically released by pushing a button on the top of the canister; and the angled spray was new. Trigger operated mechanisms, by contrast, tended to expel fluid horizontally. Trigger operated mechanisms had not previously been used for air fresheners.

The winning design was chosen because it had a very distinctive look. Important features which gave it that look were its narrowed neck; its angled and elliptical top; its integrated look, especially the way that the top blended in with the body of the container and its flowing lines. The ergonomic aspects of the design were also important. One of the reasons for the choice of the angled top was that it would signal to consumers the direction of flow of the spray exiting the nozzle. The top of the head of the spray was flared out more in later iterations. This had the advantages both of making the hand grip of the container easier and also provided a flange which helped in preventing the container from slipping through the user's grip. It was also said that the flanged top helped to support the weight of the product, thus avoiding fatiguing the wrist; but since the product is lightweight and not held for prolonged periods, this did not seem to me to be a particularly important feature. The curves of the can and the head merge around the neck giving the product an integrated feel. The narrowed neck, as well as being more aesthetically pleasing, also made the container sit more easily in the hand. However, the fact that the container was not a simple cylinder meant that it would have to be custom made. The container was in fact manufactured from aluminium, rather than the conventional tinplate.

Overall, the shape of the design had a smooth and dynamic feel, flowing lines, and an elegant sense of movement.

Success of the design

The Febreze product was well-received within the packaging community. At the end of 2004 it won the New Jersey Packaging Executives Package of the Year Award. In 2005 it won the Ameristar Award within the category of household products. The citation for the latter award said:

"Febreze Air Effects is packaged in a uniquely shaped aerosol can that breaks category norms, stands out on the shelf, is easy to use and delivers a superb scent experience for consumers. Febreze redefines the difference a great product and a unique package can make in a customized container and actuator."

The new Air Wick cap

The process

Towards the end of 2004 the marketeers within Reckitt Benckiser wanted to launch an "Odour Stop" sub-brand within the Air Wick brand. This would be a spray which would tackle odours rather than simply mask them. The designers were given two briefs. One was a brief from the marketing people describing the Air Wick brand and the message to consumers that they wanted to convey. The other was a technical design brief for the new container. Only the latter was in evidence. Mr Butler prepared the technical design brief. By the time he came to compile the design brief Mr Butler had become aware of Procter & Gamble's registered Community design; and one of the instructions in the design brief was that there should be no infringement of intellectual property rights. I accept that this was a genuine instruction; and that Reckitt Benckiser had no desire to infringe the registered Community design. The technical design brief is formulated in such a way as not to stunt the creativity of the designer.

The technical design brief began by saying that:

"This new product is likely to be sold at a premium to our existing range of aerosol air fresheners and as such we are looking for unique packaging to differentiate it from the standard range."

The marketeers had looked at a range of products and had decided that the two best options to consider were a spray actuated by a trigger and a spray actuated by a lever. So far as a trigger was concerned, there were again two options. One was to buy in a standard trigger and aerosol assembly, and cover it with a decorative shroud. The second was to have a custom aerosol trigger assembly manufactured with a decorative shroud. The second option gave more design flexibility, as it would enable Reckitt Benckiser to specify more of the trigger design and also to specify a spray direction between horizontal and 30 degrees from horizontal. The general requirements of the brief included the following:

"The spray cap must suit a standard 52mm (300ml) European tinplate aerosol fitted with a standard 1" continuous valve – this can be either a vertical or tilt action valve

The method of actuating the aerosol is to be via a 'trigger' or 'lever'. The trigger routes will be similar to a standard trigger spray as used on bottles of household cleaner… The action of actuation for both trigger and lever must be easy (not too high a force required), and also obvious to the consumer and ergonomic.

A pumping action will not be required – depressing the 'trigger' will open the aerosol valve for a continuous spray"

Under the heading "Specific design requirements" the brief said:

"Ideally all dimensions of the assembled trigger should lay within the external diameter of the aerosol can i.e. 52mm. This is to allow easy automatic handling of the filled cans.

Some designs with the shroud/trigger protruding outside the can diameter can be submitted so the effect on the automatic filling lines can be evaluated.

The base of the shroud must be horizontal and not shaped to cover any of the can graphics."

Mr Butler explained the reason why the trigger was not to protrude outside the "footprint" of the can:

"…what you tend to find are the marketeers want something which is going to be very different and will stand out on the supermarket shelves, whereas the people who run the aerosol filling lines at our factory in Derby are looking for something that is as standard as possible so they can maintain their line efficiencies and line outputs. They, ideally, would have looked to have gone with the standard cap because it means absolutely no changes on-line. The requirement to try to keep the whole of the trigger within the footprint of the can came from Derby, mainly because of their automated collation equipment at the end of the filling line; the concern being that if you actually have the top part of the cap sticking very proud of the aerosol can, as all these things come down the conveyor belt and nest up against each other, if you have a wide diameter at the top, they will all start leaning outwards and, at the end, if the line stops for any reason, you will get cans falling over which then manually have to be corrected."

Mr Butler agreed that there was no technical requirement for an elliptical top; nor any technical requirement for an angled head. In his witness statement Mr Butler had pointed to a number of features that he said were technical constraints in designing the new Air Wick cap. But in his cross-examination he fairly accepted that these were not really technical constraints at all. As he explained:

"We feel that if we had actually sort of built that level of detail into the technical design brief, you are very much… constraining the design agency with what they can actually come forward with. What we try to do, when we are … constructing the technical design brief, is just to… make sure that the agency which is being briefed on the aesthetic is aware that this is a product which has to be industrialised and just so they have one thought on … how this product is actually going to be put together and how it is going to be used by the consumer, rather than just looking at purely aesthetic requirements."

In fact it is clear that the design process was primarily led by the aesthetics of the design as the following passage in Mr Butler's evidence demonstrates:

"Q. Is the true situation not this; that having got this design, there are then constraints on the mechanism that goes inside it, and that is what you have identified, but until you have the design, you do not actually have those constraints?

A. That is partially true because a lot of it would have depended on the design that we actually got from the design agency as to whether it was a trigger, whether we actually went for a lever and the basic dimensions of it. But, yes, you are correct in that having got a specific design where the trigger is shown in that particular position, there will then be some technical constraints that are governed to fit into that aesthetic."

That said, I accept that once the design decision to make an aerosol actuated by a trigger had been taken:

i) The trigger itself had to have sufficient room behind it so as to be capable of being depressed;

ii) The trigger had to be capable of being operated by one or two fingers;

iii) The overall size of the container had to be such that it could be easily gripped by the hand while operating the trigger.

The result

The result of the design process was a new Air Wick cap that fitted onto a standard cylindrical aerosol container. The container, with its new cap is reproduced below:

There were few kind words said about the Air Wick design. Ms Nelson said that she would have rejected the design out of hand, because it did not have a "light and airy" feel. Mr Treeby, Reckitt Benckiser's own expert said that it was "a common canister with a plastic cap stuck on top"; and that it was "not in the same league as regards quality".

The Regulation

Registered Community designs were created by Council Regulation EC 6/2002 ("the Regulation"). The Regulation is binding and directly applicable in all Member States. The Regulation is comparatively new; and there are few cases which help on its interpretation.

The following are the material parts of the Regulation:

"Recitals

(5) This calls for the creation of a Community design which is directly applicable in each Member State, because only in this way will it be possible to obtain, through one application made to the Office for Harmonisation in the Internal Market (Trade Marks and Design) in accordance with a single procedure under one law, one design right for one area encompassing all Member States.

(10) Technological innovation should not be hampered by granting design protection to features dictated solely by a technical function. It is understood that this does not entail that a design must have an aesthetic quality. Likewise, the interoperability of products of different makes should not be hindered by extending protection to the design of mechanical fittings. Consequently, those features of a design which are excluded from protection for those reasons should not be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection.

(14) The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.

(19) A Community design should not be upheld unless the design is new and unless it also possesses an individual character in comparison with other designs.

Article 1

1. A design which complies with the conditions contained in this Regulation is hereinafter referred to as a "Community design".

2. A design shall be protected:

(a) by an "unregistered Community design", if made available to the public in the manner provided for in this Regulation;

(b) by a "registered Community design", if registered in the manner provided for in this Regulation.

3. A Community design shall have a unitary character. It shall have equal effect throughout the Community. It shall not be registered, transferred or surrendered or be the subject of a decision declaring it invalid, nor shall its use be prohibited, save in respect of the whole Community. This principle and its implications shall apply unless otherwise provided in this Regulation.

…

Article 3

For the purposes of this Regulation:

(a) "design" means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation;

(b) "product" means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs;

…

Article 4

1. A design shall be protected by a Community design to the extent that it is new and has individual character.

…

Article 5

1. A design shall be considered to be new if no identical design has been made available to the public:

…

(b) in the case of a registered Community design, before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority.

2. Designs shall be deemed to be identical if their features differ only in immaterial details.

Article 6

1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public:

…

(b) in the case of a registered Community design, before the date of filing the application for registration or, if a priority is claimed, the date of priority.

2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

Article 7

1. For the purpose of applying Articles 5 and 6, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date referred to in Articles 5(1)(a) and 6(1)(a) or in Articles 5(1)(b) and 6(1)(b), as the case may be, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

…

Article 8

1. A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function.

…

Article 10

1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.

2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.

Article 12

Upon registration by the Office, a design which meets the requirements under Section 1 shall be protected by a registered Community design for a period of five years as from the date of the filing of the application. The right holder may have the term of protection renewed for one or more periods of five years each, up to a total term of 25 years from the date of filing.

Article 19

1. A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

Article 24

1. A registered Community design shall be declared invalid on application to the Office in accordance with the procedure in Titles VI and VII or by a Community design court on the basis of a counterclaim in infringement proceedings.

…

Article 25

1. A Community design may be declared invalid only in the following cases:

…

(b) if it does not fulfil the requirements of Articles 4 to 9;

Article 36

1. An application for a registered Community design shall contain:

(a) a request for registration;

(b) information identifying the applicant;

(c) a representation of the design suitable for reproduction. However, if the object of the application is a two-dimensional design and the application contains a request for deferment of publication in accordance with Article 50, the representation of the design may be replaced by a specimen.

2. The application shall further contain an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied.

3. In addition, the application may contain:

(a) a description explaining the representation or the specimen;

…

(d) the classification of the products in which the design is intended to be incorporated or to which it is intended to be applied according to class;

…

6. The information contained in the elements mentioned in paragraph 2 and in paragraph 3(a) and (d) shall not affect the scope of protection of the design as such.

Article 80

1. The Member States shall designate in their territories as limited a number as possible of national courts and tribunals of first and second instance (Community design courts) which shall perform the functions assigned to them by this Regulation.

2. Each Member State shall communicate to the Commission not later than 6 March 2005 a list of Community design courts, indicating their names and their territorial jurisdiction."

The High Court of England and Wales was designated a Community design court for the purposes of article 80 under S.I. 2005 No. 696.

Some matters of interpretation

There is little guidance from decided cases about how the Regulation is to be interpreted. Mr Carr submitted, and I accept, that since the Regulation applies across the whole European Union, it is desirable for there to be consistency of interpretation across all member states. Registration of Community designs is regulated by the Office for Harmonisation of the Internal Market (OHIM) and their decisions give useful guidance. But by the same token, decisions of courts in other member states can also provide useful guidance.

Criteria for registration

In order for a design to be validly registered it must satisfy two tests. First, it must be new. Second, it must have individual character. Novelty depends on there being no "identical" design having been made available to the public at the relevant date; but a design is deemed to be identical if it does not differ except in "immaterial details". Individual character depends on the design producing a "different impression" on an informed user by any design that has been made available to the public. If a design passes the first test, it must still pass the second. Since these are two separate tests, the Regulation must, I think, contemplate that it is possible that a design will pass the first test but fail the second.

It is common ground that validity and infringement are the obverse and reverse of the same coin. The test that applies to determine whether there has been a valid registration is the same test as applies in order to determine whether there has been an infringement.

What is protected?

If a design passes these two tests, it is registered as a Community design. The form of the registration derives from the representation included in the application under Article 36. The definition of "design" is that it is the appearance of the whole or part of a product. Whether it is the whole of the product or only part of the product depends, in my judgment, on what is depicted in the application for registration. In the case of a monochrome line drawing, what is protected is likely to be the shape or contours of the product. Although the definition extends to colours and materials, if they are not depicted, they will not be protected. By the same token, if the registered design depicts only part of a product, it is only that part that will be protected. It must be noted that although the applicant is required to identify the products to which his design will be applied, the scope of the protection in that respect is not limited by that: Article 36.6. This means, as both Mr Carr QC and Mr Wyand QC agreed, that if a design is registered for, say, an aerosol, it could be infringed by, say, a vase.

Article 8 limits protection. It says that a Community design does not subsist in features of appearance of a product which are solely dictated by its technical function. This means that those parts of the depiction of a registered design whose appearance is solely dictated by its technical function are not protected at all. The notion of a feature whose appearance is "solely dictated" by function is narrowly interpreted. In Landor & Hawa International Ltd v Azure Designs Ltd [2006] EWCA Civ 1285 the Court of Appeal held that the exclusion only applies where the part of the design in question was the only way to achieve the particular function. It is not easy to think of concrete examples where this exclusion would apply. A table tennis ball must be a sphere, perhaps.

Article 10 extends the protection. It applies not only to the registered community design; but also to any other design which does not produce on the informed user a different overall impression. Although this requirement is phrased in the negative, both Mr Carr QC and Mr Wyand QC agreed that the question for me is whether the alleged infringement produces the same impression as the registered Community design. In deciding whether it does, I have to take into account the freedom of the designer to develop his design. Most of these elements have difficulties of their own.

Informed user

The first question is: user of what? If, as Article 36.6 says, the indication of the product class does not limit the scope of the protection, is the user a user of the product class in question, the product class of the alleged infringement; or both? Again counsel agreed that in order to make the Regulation workable, I should confine myself to a user of the class of product class indicated in the registration. In the present case that is a user of sprayers. This person is a user of sprayers, not a designer or manufacturer of sprayers.

Next, the user is not just an ordinary consumer, but an informed user. The notion of the informed user has been considered in some cases; one in the Patents County Court, and some in OHIM. In an obiter section of his judgment in Woodhouse UK v Architectural Lighting Systems [2006] RPC 1 in the Patents County Court HH Judge Fysh QC said:

"First, this notional person must obviously be a user of articles of the sort which is subject of the registered design--and I would think, a regular user at that. He could thus be a consumer or buyer or be otherwise familiar with the subject matter say, through use at work. The quality smacks of practical considerations. In my view the informed user is first, a person to whom the design is directed. Evidently he is not a manufacturer of the articles and both counsel roundly rejected the candidature of "the man in the street". " Informed" to my mind adds a notion of familiarity with the relevant rather more than what one might expect of the average consumer; it imports the notion of "what's about in the market?" and "what has been about in the recent past?". I do not think it requires an archival mind (or eye) or more than an average memory but it does I think demand some awareness of product trend and availability and some knowledge of basic technical considerations (if any). In connection with the latter, one must not forget that we are in the territory of designs and thus what matters most is the appearance of things; as Mr Davis reminded me, these are not petty patents. Therefore, focus on eye appeal seems more pertinent than familiarity with the underlying operational or manufacturing technology (if any). I feel uncomfortable with analogy to the ""man skilled in the art" whose "nerd-like" (and other) attributes seem too technical: Technip France SA's Patent [2004] RPC 46 at [6-12] ( CA)."

Mr Carr said, quite rightly, that not only were these observations obiter, but that they were not concerned with the Regulation. Rather they were concerned with the Registered Designs Act. But the Act was amended in order to conform with an EU directive; and the Regulation itself must be interpreted so as to conform with the Directive. So I do not consider that that is a distinction with a difference. Mr Carr next criticised elements of Judge Fysh's reasoning. He said that it is incorrect to suggest that the informed user does not require an archival mind, since he needs to know about the design corpus and the prior art, if it has been made available to the public (akin to the ordinary person skilled in the art in patents). Furthermore, he must have more than "some knowledge of basic technical considerations (if any)" since he needs to consider design freedom and features dictated solely by function.

Before dealing specifically with Mr Carr's criticisms, I should refer to the approach taken by the invalidity division of OHIM, whose approach Mr Carr commended. Eredu v Arrmet (OHIM ref: ICD000000024; 27 April 2004) concerned a design for a bar stool, consisting of a seat, a back and a footrest mounted on a central tubular stand. In considering the nature of the informed user OHIM said:

"(16) The degree of freedom of a designer is limited by the fact that stools of the type to which the CD relates necessarily comprise a base, a central column and a seat in order that the stool fulfils its function.

(17) The informed user is familiar with the basic features of stools. When assessing the overall impression of the design he/she takes into consideration the limitations to the freedom of the designer and weighs the various features consequently. He/she will pay more attention to similarities of non necessary features and dissimilarities of necessary ones.

(18) In particular, the informed user is aware of the prior art known in the normal course of business to the circles specialised in the sector concerned. Therefore, he knows that that type of stool usually has a foot rest and a back."

So far as the informed user's memory is concerned, OHIM's approach was that the informed user is aware of the prior art "known in the normal course of business" to the circles concerned. This does not, to my mind, suggest an "archival mind". So far as his technical appreciation is concerned, OHIM said that he was familiar with the "basic features" of stools. This does not, in my judgment, differ materially from Judge Fysh's formulation.

Sunstar Suisse SA v Dentaid SL (OHIM Ref: ICD 000000420; 20 June 2005) concerned a design for an interdental toothbrush. OHIM said:

"(18) The informed user is also familiar with the basic characteristics of interdental brushes. Specifically, he will be familiar with all designs that are known in the normal course of business in specialist circles in the sector in question. He will know that brushes of this type have a specific form on account of the function they are to fulfil, this form's configuration being determined by two elements (a head with the wire, plus a handle). There are various basic forms that may be used to configure the appearance of the brush. One of these is the 'L' form."

Again, as far as the informed user's memory is concerned, OHIM's approach was also that the informed user is aware of the prior art "known in the normal course of business" to the circles concerned. So far as his technical appreciation is concerned, OHIM again said that he was familiar with the "basic characteristics" of interdental brushes.

Built NV Inc v I-Feng Kao (OHIM ref: ICD 0000002103; 3 May 2006) concerned a design for a bottle carrier. OHIM said:

"(16) The informed user is familiar with bottle bags and other similar bottle carriers of the type to which the CD relates. In particular, he is aware that such devices have the function of holding the bottles and enabling their carriage and therefore must have a compartment for the bottles and at least one handle to carry them in the hand. When assessing the individual character of the CD the degree of freedom of the designer in developing his design for the bottle bags must be taken into consideration. In the present case, this degree of freedom is limited to the functional requirements of the product. Because the bottle bag has to fit the bottles, its body has to follow the generally cylindrical shape of the bottles. Regarding the handle, the designer has a broader degree of freedom in designing it in relation to the bottle bag body."

Although OHIM did not discuss the extent of the informed user's memory or the level of technical knowledge, the design in question was a design for a relatively simple product; and OHIM approached both elements in simple terms. Again, I do not find that OHIM's reasoning conflicts with Judge Fysh's formulation.

Finally, Honda Motor Co Ltd v Kwang Yang Motor Co Ltd (OHIM Ref: ICD 000001006; 30 August 2006) concerned a design for an internal combustion engine, intended principally for lawnmowers. OHIM said:

"(25) The informed user is familiar with internal-combustion engines of the type to which the RCD relates. In particular, he is aware that such devices have the function of powering the tools on which they are installed and upon which they have to fit, so there are certain elements which are obligatorily present and disposed in a certain way in an internal combustion engine. Among them, as the Holder rightfully observes, the muffler, the air filter, the vent and the fuel tank have all to be positioned on the upper side for functionality reasons and since the overall impression of the engine will be mainly given by the appearance of its upper part, as this will remain visible during the normal use of this internal combustion engine, when assessing the individual character of the RCD it has to be taken into account that the degree of freedom of the designer is limited in so far as the internal combustion engines has to fulfill its function."

The elements of the informed user's appreciation of the technical aspects of internal combustion engines are, in my judgment, pitched at a relatively low level of sophistication.

I do not detect any material divergence between OHIM and Judge Fysh. I do not, therefore, consider that Mr Carr's criticisms of Judge Fysh's formulation are justified. The reference to the "existing design corpus" comes from recital (14). That says that whether a design has individual character is based on whether the overall impression produced on an informed user "clearly differs from that produced on him by the existing design corpus". However, I do not consider that the "existing design corpus" is intended to bring in more than what Judge Fysh referred to as product trend and what has been available in the recent past. First, the design corpus to which the recital refers is the "existing" design corpus; not the whole history of product development. Second, the word "corpus" is, at least to my mind, indicative of the general body of design rather than each and every example of it. If the informed user is called upon to evaluate the impression made by the registered design on the one hand and a piece of prior art (or alleged infringement) on the other, he will do so against his background knowledge of the existing design corpus. It is true that the informed user must also take into account the freedom of the designer to develop his design. But I do not consider that this means that he must have more than a basic appreciation of the technical aspects of the limitations impinging on the design. An informed user (not designer or manufacturer) with extensive technical knowledge would be very unlikely to exist in reality. Accepting as I do that the "informed user" is a legal construct, it is unlikely that the legislation intended the legal construct to bear no relation to reality. So far as Mr Carr's point on the exclusion of features dictated solely by function is concerned, these are excluded from the ambit of the informed user's appreciation, since they do not form part of the registered design at all. That these features are not to be taken into account at all is, in my judgment, made clear by recital (10).

Design freedom

In considering the validity of a registration under Article 6 and also in considering infringement under the extended protection given by Article 10, it is necessary to take account of the "degree of freedom of the designer in developing the design". The designer to be considered under Article 6 is the designer of the registered design; whereas the designer to be considered under Article 10 is the designer of the alleged infringement. Where, as here, both the registered design and the alleged infringement are the same product, the degree of freedom is (or ought to be) identical.

One constraint on the degree of design freedom of the designer is the nature of the product that he is designing. Another might be health and safety requirements. A third might be the rules of some organisation regulating the area of activities in which the design is to be used (sports equipment or barristers' wigs). These are all external constraints. Mr Carr, however, submitted that internal commercial constraints could also count as limitations on the designer's freedom to develop his design. Thus if the enterprise that commissioned the design had existing tooling or an existing production line that it could not afford (or did not wish) to change, that could be a relevant constraint. I do not agree. The test must be an objective one which applies to all designers. Otherwise, as Mr Wyand pointed out, whether a design would infringe might depend on the financial muscle of the alleged infringer. There are other objections to Mr Carr's submission. First, the "informed user" whose appreciation is relevant cannot be imbued with any knowledge of the financial resources of a particular manufacturer. Second, how is one to judge the degree of freedom without a prolonged examination of the internal resources of the designer or his client? In the present case it was said that Reckitt Benckiser wanted to use its existing production line. But I have no means of knowing what the cost would have been of making changes to the line. Bearing in mind that the same approach must be taken by a national court considering infringement, and by OHIM considering the validity of a registration, the introduction of such subjective features would, in my judgment, be unworkable.

What is being compared?

The primary right conferred by the regulation is in Article 19. This says that the registration "of a Community design" confers on its holder the right to use "it" and to prevent any third party not having his consent from using "it". The word "it" must refer to the registered Community design. Protection is then extended by Article 10 to include "any design which does not produce on the informed user a different overall impression". Plainly, in my judgment the first of the comparators is the registered Community design itself. But what is it to be compared with?

Mr Carr submitted that the correct comparator was the allegedly infringing product, taken as a whole (its "overall impression"). Mr Wyand submitted that the correct comparator was that part of the allegedly infringing product that corresponded to the registered Community design. The practical difference in the present case between these two approaches was that Mr Carr submitted that in making the comparison I should take into account the colours and graphics of the Air Wick aerosol; whereas Mr Wyand submitted that I should strip the Air Wick aerosol of its colours and graphics and compare the shapes alone.

Mr Carr said that his submission followed from the definition of "design" which included the whole or part of a product (including its colours and ornamentation). A "product" was in turn defined so as to include its get-up or packaging. But I do not consider that these definitions assist. In my judgment the scope of the registration limits the elements of the registered Community design entitled to protection; and one would expect like to be compared with like. Moreover, the same definition applies to unregistered Community design. It would, in my judgment, be surprising if someone who found that a significant part of his design had been copied was debarred from claiming that his unregistered Community design had been infringed merely because the infringer had added material of his own. Mr Carr supported his submission by reference to the decision of OHIM in Ampel 24 Vertriebs-GmbH & Co KG v Daka Research Inc (OHIM Ref: ICD 000000867; 1 December 2005). The case concerned an underwater motive device. It was argued in that case that the application for registration ought to be refused because the design produced the same overall impression as a prior design which had been made available to the public. The depiction of the subject matter of the application was a line drawing, whereas the prior design was a marketed product, complete with colours and graphics. OHIM said:

"(14) However, the CD does not subsist in features of appearance solely dictated by the technical function of the underwater motive device. The device would still fulfill its function with a body of different shape. For instance, the designer could have chosen a more symmetrical shape for the body of the device such as a cylinder instead of the asymmetrical form realized in the CD. Likewise, the handle element could have been formed by two separated grips on the sides of the body instead of the unique piece attached on top of the body of the CD. Therefore, the informed user will take all features of appearance into account when assessing the overall impression of the prior design and CD, respectively.

(15) Since the differences between the two opposing designs are limited to minor deviations in the shapes of the handle elements, the colour and the use of signs, the CD and the prior design both produce the same overall impression on the informed user. Therefore, the CD lacks individual character in view of the prior design."

Mr Carr argues with some force that in this case OHIM was taking into account all features of the appearance of the two designs into account; and that their conclusion was not that colour and signs were irrelevant, but that they were not significant enough to produce a different overall impression. However, it is impossible to tell from the report whether the point was argued. On the other hand, in Eredu the holder of the registered design argued that the fact that the material used for the support of the back of his stool was made of aluminium was a relevant difference between his design and the prior art. The materials of a product are within the definition of "design". OHIM rejected that argument in the following terms:

"The holder also argues that the material used for the support of the back is of coated aluminium. This element is not to be retained as the graphical representation of the prior design does not indicate any specific material and thus the protection granted is for the shape of the design only irrespective of the material used."

The approach in Eredu was to confine the comparison to the features of the design that were the subject of the registration. I prefer the approach in Eredu. The registration must, in my judgment, be the yardstick by which infringement is to be judged. The registration holder is entitled to choose the level of generality at which his design is to be considered. If he chooses too general a level, his design may be invalidated by prior art. If he chooses too specific a level he may not be protected against similar designs. But in my judgment to allow features that are not the subject-matter of the registration to play a part in the assessment of the overall impression would unduly restrict the scope of protection. This conclusion is, to some extent, supported by Russell-Clarke & Howe on Industrial Designs (7^th ed) para 2-20 in which the editor/author says:

"Under the new EC harmonised law, there seems no reason why the design of the chair back cannot be registered by itself. In practice, this would be achieved by filing a representation which portrays only the chair back and does not portray the rest of the chair. This would mean that when it came to infringement, only the back of the defendant's chair would be compared with the registration and it would be irrelevant how different or similar, for example, the legs of the defendant's chair are to the design of the proprietor's own products on the market."

There is nothing in the registered Community design in the present case that limits the colours. It seems to me therefore, that if one does not eliminate colour from the alleged infringement, the practical effect of not claiming a colour would be to limit the scope of protection to the colour white. But that would defeat the purpose of not claiming a colour (or it might lead applications for registration of a particularly distinctive shape to claim all conceivable colours).

I do not, therefore, accept Mr Carr's submission.

Overall impression

Having eliminated features dictated solely by function, and having taken into consideration the degree of freedom of the designer to develop his design, the informed user must come to his "overall impression". It is common ground that the impression in question is a visual impression. Mr Carr submitted that the correct approach was as follows:

i) 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;

ii) Identify similarities and differences;

iii) Identify the most important features of the two designs because the informed user focuses his or her attention primarily on such features;

iv) If the most important visual parts of the designs at issue do not give a different overall impression, then consider whether the other parts of the designs are sufficiently different in appearance or importance to change the impression given by the main elements.

Mr Carr emphasised that this process was not a question of a quick glance. It was the product of a careful and informed analysis.

At the beginning of the case Mr Wyand's approach was that the required assessment was similar to the notion of the imperfect recollection of the ordinary consumer as applied in trade mark law. I do not consider that that is the correct approach. First, the person who is carrying out the assessment is not an ordinary consumer; but an "informed user". An informed user must, in my judgment, be taken to approach his task more rigorously than an ordinary consumer. Second, the notion of imperfect recollection is useful for assessing whether there is a risk of confusion between a trade mark and a sign. But the risk of confusion plays no part in the law relating to registered Community designs. By the end of the case, Mr Wyand had, to some extent, modified his approach. He accepted that the informed user would look at the two designs side by side to identify the similarities and differences, but that having done that, the overall impression of each was what would "stick in the mind" after that exercise had been performed.

Mr Carr's approach, so far as it consist of identifying similarities and differences between the registered design and the alleged infringement is, in my judgment, supported by the practice of OHIM.

Thus in the Eredu case OHIM said:

"(19) Art. 10(1) CDR requires the assessment of the overall impression produced by the prior design and the CD on the informed user, respectively. To assess the overall impression, the designs must be compared both on their various features taken individually and on the weight of the various features according to their influence on the overall impression."

The other cases in OHIM to which I have referred are applications of this general approach. They are, of course, decisions on validity rather than infringement; but the two tests are the same.

Having said that, I agree with Mr Wyand that the overall impression of a design is what sticks in the mind after it has been carefully viewed. To that extent the process is not a constant darting between one design and another. Nor is it simply a catalogue (even a weighted catalogue) of similarities and differences. The task of the informed user is to reach an overall impression of each of the two (or more) designs and then to ask whether those overall impressions differ. (I note that recital 13 says "clearly differ" but the adverb is not carried through into the regulation itself. However, the recital can be used as an aid to interpretation).

Decisions in other European jurisdictions

The proceedings in England are only part of a history of litigation between the parties. Procter & Gamble have succeeded in other European jurisdictions in obtaining provisional measures (i.e. interim injunctions) against Reckitt Benckiser prohibiting the use of the new Air Wick design. It is common ground that I am entitled to take from these decisions what guidance they afford; but it is equally common ground that they do not bind me, and that I must make up my own mind.

Vienna Commercial Court

The Vienna Commercial Court concluded that the Air Wick product had a shape that was "very similar" to the registered Community design; and that the overall impression infringed the registered design. It went so far as to say that Recktt Benckiser's product was "confusingly similar" to Procter and Gamble's. An interim injunction was granted.

Brussels Court of First Instance

The Brussels Court of First Instance held that the characteristics of the two designs differed only in immaterial details, such that they were deemed to be identical for the purposes of the Regulation. The court continued:

"The "AIR WICK ODOR STOP" air freshener has the same slanting, sloping and oval form at the top to cover the spray pistol and the same protective cap which continues at the backside of the spray pistol and which rests on the container. Both air fresheners are also narrowed at the trigger of the spray pistol. These characteristics immediately attract attention when one looks at the drawings of the design of the "FEBREZE" air freshener as pictured in the registration certificate and above, and are therefore decisive in the general impression that is given."

An interim injunction was granted.

Evry Commercial Court

The Evry Commercial Court concluded that the differences in appearance between Air Wick and the registered design were insignificant when compared to the similarities between the two. An interim injunction was granted.

Law Court of Milan

The Law Court of Milan decided that Air Wick reproduced the most significant traits of the registered design and that the only elements of apparent differentiation had no impact on the formal innovative identity of the design. An interim injunction was granted.

The expert evidence

Both sides called experts: Mr Nigel Goode for Procter & Gamble and Mr Cameron Treeby for Reckitt Benckiser. Some expert evidence may be necessary in order to equip the court with the knowledge of an informed user of sprayers; but expert opinion on the merits of the rival designs is unlikely to be helpful. I mean no disrespect to either expert; but in my judgment enough of the technical background was explained by Mr Bates and Mr Butler.

Similarities and differences

In my judgment the dominant features of the registered design are:

i) The angled, elliptical, sloping top culminating in the spray nozzle;

ii) The slightly curved trigger protruding from the angled underside of the top, but remaining within the footprint of the base;

iii) The recessed "neck" opposite and around the trigger;

iv) The sloping shroud intersecting with the body of the canister and, in particular forming a curve at the rear;

v) The cylindrical main body.

All these features are, in my judgment, found in the Air Wick canister and top. There are, to be sure, differences:

i) The elliptical top of the registered design is slightly convex, whereas that of the Air Wick product is slightly concave;

ii) The elliptical sloping angled top of the Air Wick product is stubbier than the registered design;

iii) The trigger of the Air Wick product is shorter and narrower and slightly more flared than the registered design;

iv) The shroud of the Air Wick product is not as smooth as the registered design. There is a change of levels which makes the former's shroud resemble a French Foreign Legionaire's kepi. Apart from the protrusion of the tail of the kepi at the rear of the canister, the intersection between the shroud and the can is straight rather than curved;

v) The Air Wick canister uses a standard can; but the only real visual impact of this is that the neck of the overall form is at a slightly higher level than the neck of the registered design.