By Richard Taylor, DLA/Piper, Yorkshire


Registered Community Designs



Registered Community Designs (RCDs) can give useful intellectual property protection for new product designs. Introduced in 2003 by Commission Directive 98/71 (the Directive) and also governed by Council Regulation 6/2002 (the Regulation), RCDs give 25 years' worth of design protection from their application date.



RCDs are granted to product designs that are 'new' and have 'individual character', and they are infringed by 'any design which does not produce on the informed user a different overall impression'. RCDs are cheap and easy to obtain. Filing fees are just a few hundred pounds (£160 for one design plus an £84 publication fee, and £80 each for two to ten designs after that), and the application form needs little more than some good digital photos of the design in question. Practitioners acting for clients who produce new product designs can find out more about the registration process at http://ohmi.eu.int/en/design/default.htm (designs for the UK alone can be registered at www.ipo.gov.uk/design.htm).



However, the English Courts have been setting firm limits around the scope of RCD protection. This autumn saw the first RCD litigation to reach the Court of Appeal, Procter & Gamble Co. v Reckitt Benckiser (UK) Ltd [2007] EDCA Civ 936. Procter & Gamble owns an RCD to an air spray freshener called Febreze. Procter & Gamble claimed that its RCD was infringed by Reckitt's 'Air Wick' room air freshener.



The first question on appeal was the proper legal test for finding infringement. At first instance, Judge Lewison had found that there would be no infringement if an accused design 'clearly' differed from the overall impression of the RCD (and went on to find that the Air Wick freshener did not create a 'clearly different' overall impression to the Febreze spray). The Judge carried the word 'clearly' over from the recital to the Regulation, which says that a design will have individual character only if its overall impression 'clearly differs' from the existing design corpus.



The Court of Appeal pushed back on this. It said that a 'clear' difference was only needed in the test for registerability, that is to say the new design had to 'clearly differ' from the prior art in order to be registered. The point was to put clear blue water between the RCD and the prior art, since otherwise RCDs might claim everyday design modifications. But there was no such policy on the question of infringement. The Directive said only that a 'different overall impression' was needed, and there was no requirement that this impression be 'clearly' different.



The second question was, who is the 'informed user'? What are his or her characteristics, and what factors would he or she take into account in assessing the designs?



The informed user, it seems, is knowledgeable and careful. Some characteristics that the Court described were:

l he will take time to carefully view and compare the designs. He is not the 'average consumer' of trade mark law, who is allowed to carry an imperfect picture of a trade mark in his mind (which makes infringement by a similar mark more likely);

l he is open to design issues and is fairly familiar with them;

l he knows when shapes are required to be the way they are by reason of function, and that the degree of freedom in developing the design has to be taken into account (Articles 6.2 and 10.2 of the Regulation). So, for example, where two air fresheners both use a trigger and pistol grip (as in this case), he knows that there are constraints on design freedom in those designs, and so on the scope of protection;

l he is aware of the prior art known in the normal course of business to the circles specialised in the sector concerned.

Applying these tests, the Court of Appeal found that the Air Wick design did not infringe the Febreze RCD. The two designs had many of the same features, but several of these were functional, such as the trigger, the grip, the flared neck and the upwardly angled direction of the spray nozzle. These functional features aside, the Air Wick sprayer gave a slightly cheaper, coarser impression. The Febreze sprayer was smaller, had a larger diameter and was more compact, the waist lower down and the neck thinner and more elegant. The Febreze head is reminiscent of a snake's head, whereas the Air Wick is reminiscent of a lizard's head.



Parallel litigation over the same designs has taken place in France, Belgium, Germany and Austria, with only the Austrian Court coming to the same conclusion as the UK and finding no infringement.



Be that as it may, the UK Courts may now be more reluctant to find infringement where material differences of design can be pointed out. But the Judgment is no infringer's charter. Last week, J Choo (Jersey) Ltd v Towestone Ltd and Ors [2008] All ER (D) 35 (Jan) became the first reported case to apply Reckitt Benckiser. The case concerned registered and unregistered design rights in a Jimmy Choo handbag. The handbag was a large 'bucket' bag with four panels and a double layer of threaded eyelets around the top - features shared by a bag sold by the defendant from its Oxford Street store. Relying on Reckitt Benckiser, the defendant tried to claim that the differences between the bags, including in texture and the number of eyelets, meant that there was no infringement. The Judge was having none of it. He held that, although on a detailed examination there were some differences between the bags, the overall impression on the informed user was exactly the same, and so the Jimmy Choo design had been infringed.



In Green Lane Products Limited v PMS International Group Limited [2007] EWHC 17122, the Courts considered a different point of the law of registered designs, namely the scope of the prior art that can be cited to challenge the validity of an RCD.



Green Lane sells spiky plastic balls for use in tumble dryers. The balls help soften the fabrics and reduce drying time. In 2004, Green Lane registered RCDs to the balls, and described the class of product to which it intended to apply the designs as 'flat irons and washing, cleaning and drying equipment'.



PMS also markets spiky plastic balls. Since 2002, before the date of Green Lane's RCD, it marketed the balls in the EU as 'massage balls'. In 2006, after the date of Green Lane's RCD, it devised and marketed other potential uses for the balls, including as hand exercisers, toys and dog trainers.



Green Lane accepted that PMS's marketing of the balls prior to the date of its RCDs entitled PMS to continue to sell them as massage balls. However, it claimed that PMS's new uses infringed its RCDs. A point of background law to note is that although the applicant for a RCD is required to list the fields in which it intends to apply the design (Regulation Article 36.2), once the RCD is granted it gives protection against any product made to the design (Article 10), regardless of whether that type of product is named in the RCD.



The question before the Court was the impact of PMS's marketing of spiky massage balls in 2002. Did this merely entitle PMS to continue to sell the balls as massage balls, or could the prior use invalidate Green Lane's RCD completely?



A little more background law is needed here. As mentioned above, in order to qualify for RCD protection, a design must be 'new' and have 'individual character'. These tests are applied as against previous designs that have been 'made available to the public' before the date of filing of the RCD (Articles 5 & 6). A design is deemed to have been 'made available to the public' if it has been published, exhibited, used in trade or otherwise disclosed, but there is an exception: 'except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned' (Article 7).



This drills down to the key legal question in this case: what was 'the sector concerned'? That is, what is the sector which, in order to come within the exception, you would need to show could not have known about the design? Was it the market sector in massage balls, in which case the market sector probably would have known about the design prior to the RCD registration, such that Green Lane's RCDs might well be invalid? Or, is 'the sector concerned' the market that Green Lane had named in its RCDs, of 'flat irons and washing, cleaning and drying equipment', in which case quite possibly the sector could not have known about the massage ball design, such that the RCD might be upheld?



The Court held that 'the sector concerned' was the sector in which the prior art is cited - in other words, in this case, the massage ball sector. If it was otherwise, the Judge said, then it would have some strange consequences. Applicants would only register narrow classes so as to narrow the scope of the prior art that could be cited against their RCD. But they would nevertheless be able to cite their RCD against all classes when granted, including classes in which the RCD was already known. A clever applicant could also spin out their protection by re-registering the design in a difference class, even after it had expired.



The matter before the Court was a preliminary point of law, and it will be interesting to see whether Green Lane's RCD can survive it. The key point is that the prior art that can be cited against an RCD is pretty wide. Perhaps the take-home message from Reckitt Benckiser, Jimmy Choo and Green Lane is that RCDs are best deployed where a design is truly original and truly distinctive. For such designs, registration remains an important protection.