Redefining Monopoly Rights to Product Design

source: Ruling clears air on EU design monopoly rights
http://www.ft.com/cms/s/0/83f5be54-7787-11dc-9de8-0000779fd2ac.html

On Wednesday, the senior appeal court judges in London handed down its decision in the intense legal battle between two of the world’s leading consumer products manufacturers, Reckitt Benckiser and Procter & Gamble. The lawsuit, which focused on rival air fresheners, has important implications for designers and brand owners. In holding that the Air Wick Odour Stop spray canister did not infringe on the design of its rival Febreeze air freshener, the appellate court overturned an earlier High Court judgment and set new legal parameters for the interpretation of the registered community design right protection.

The community design right originated four years ago in an effort to balance design rights within EU member states. Although the design protection proved popular with producers, the air-freshener dispute is the first authoritative guidance on the scope and privileges on the community design right. Lorna Brazell of Bird & Bird, counsel for Reckitt, stated that the ruling provides “clear guidance on what protection an original design can attract and, significantly, a systemic approach in order to get there.”

Under the design right rules, infringement of a registered design is judged on the basis of whether a competing product produces a “different overall impression on the informed user.” Lord Justice Jacob, one of Britain’s most senior intellectual property judges, spelled out how an informed user should be identified and what the test for ‘difference’ should be. Justice Jacob noted that “the impression which would be given to the informed user by the Air Wick product is different from that of the registered design [owned by P&G]” citing reasons ranging from the shape of the head of the sprayer to the tapering of the can. The judge concluded that in the case of the two rival air fresheners “the similarities between the products are at too general a level for one fairly to say that they would produce on the informed user the same overall impression. On the contrary, that user would get a different overall impression.”

According to Bird & Bird, the ruling will result in the lifting of several injunctions sought by Procter & Gamble in several European countries, including France, Belgium, Italy, Austria, and Spain. Additionally, these new principles are likely to be applied in a number of cases currently before EU courts.

Questions for Discussion
1. What implications might this ruling have for producers of consumer products marketing their products in the EU?