Lookalike Products: Court of Appeal Guidance on Community Designs

United Kingdom

The Court of Appeal overturned Mr Justice Lewison’s High Court decision of December 2006 that a spray bottle used by Reckitt Benckiser for marketing its “Air Wick Odour Stop” product infringed Procter & Gamble’s registration for a spray bottle, used by P&G to market “Febreze”. In doing so, the Court had changed the tests for infringement and validity and provided guidance on the comparison to be made between designs and the allegedly infringing article. The effect of the decision is to significantly narrow the scope of protection for registered designs.

Interpretation of the Community Designs Regulation

Nature of Comparison: In the High Court, Lewison J held that the comparison to be made was of what sticks in the mind about the design and the allegedly infringing product after they had been carefully viewed. This is wrong; the proper test is what strikes the mind of the informed user when the two are carefully viewed.

Different Overall Impression: The test for infringement is whether the allegedly infringing product makes a different overall impression on the informed user - not, as Lewison J had directed himself, whether it made a clearly different overall impression. Small differences may therefore be enough to avoid infringement. This further means that the tests for validity and infringement are now different: to be valid, a design must still make a clearly different overall impression.

Level of Generality: In making his decision, Lewison J had failed to descend to the appropriate level of generality, which is that which would be taken by the informed user. Having identified in words the overall impression made on the informed user by the two designs, he then failed to compare those impressions. Instead, he wrongly compared them at a higher level of generality. The similarities between the products are at too general a level to conclude that they would form the same overall impression on the informed user. When the correct level of generality was considered, they in fact give a different overall impression.

Poor Quality Imitation: Lewison J had held that, as a matter of policy, the poor quality of an allegedly infringing article would not avoid infringement. This was wrong; if the allegedly infringing article is of poorer quality this would create a different overall impression on the informed user, and there would be no infringement.   

Comment

This decision significantly narrows the scope of protection conferred by a Community design registration.  To assess infringement the Court will now put itself in the shoes of an informed user scrutinising the products at close quarters. Moreover, differences between products, even if they are not clear differences, will suffice to create a different overall impression. It now appears that a product will have to be identical, or nearly identical, to the registration to be infringing.

The decision is likely to cause considerable concern. The products appear on the face of it to be very similar indeed and the issue therefore relatively straightforward. Given existing difficulties, legal and commercial, in preventing lookalike products in the UK, this is bad news for brand owners.