It was alleged that a Community registered design comprising a series of monochrome line drawings of a spray canister was infringed by a product called ‘Air Wick’. The claimant argued that, in light of the registration, only the product shapes should be compared. The defendant responded that the correct comparator was the defendant’s product as a whole, including its colour. Underpinning these rival contentions were two related issues, namely the scope of protection of the design and how the comparison should be carried out.
Held:
Protection only extended to those aspects of the design which were depicted: ‘ 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.’
As to the second issue, Lewison J rejected the submission that he should take into account the colours and graphics on the Air Wick when comparing it with the registered design:
‘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 and Howe on Industrial Designs (7th 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).’
He then #considered the position on the basis contended for by the defendant:
‘ Mr Carr asked me to record what my conclusion would have been if I had been of the view that the colours and graphics of the Air Wick canister had to be taken into account in making the comparison.M
The predominant colour of the Air Wick canister is white. If I compare the Air Wick product with the Febreze product, the differences are not enlarged by the use of colour. Both have a predominantly white container, and both have a bluish pastel top. But that is not the comparison that Mr Carr says I should make. He wants to compare the coloured Air Wick product with the colourless registered design.
The contrast (some might say clash) between the blue pastel top and the green band immediately below the junction between the top and the canister in the Air Wick product does accentuate the difference between the two parts of the aerosol. It leads to Mr Treeby’s conclusion that the Air Wick design is a standard canister with a new top stuck on top. However, it still seems to me that the overall impression is formed by the distinctive shape of the registered design and the Air Wick product. I would not have come to a different conclusion if I had made the artificial comparison that Mr Carr urges.’
Judges:
Lewison J
Citations:
[2006] EWHC 3154 (Ch), [2007] ECDR 4, [2007] FSR 13
Links:
Jurisdiction:
England and Wales
Cited by:
Appeal from – Procter and Gamble Company v Reckitt Benckiser (UK) Ltd CA 10-Oct-2007
The claimant alleged infringement of its design right by the defendants’ Air-Wick product. The court considered the approach necessary in asking whether a European Community design had been infringed.
Held: Looking at an article for this . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 08 July 2022; Ref: scu.247332