Why Manufacturers Should Get an EU Design Patent

It's fast -- 8 weeks -- and it costs 70% less than U.S. patent.

Since its launch in 2003, US businesses have made relatively little use of the European Registered Community Design (RCD), despite their appeal in comparison with U.S. design patents. Companies can secure an RCD in as little as eight weeks -- as opposed to a possible two-year wait in the U.S. for a design patent -- and they cost about 70% less than their American counterpart.

There are other reasons why an RCD may be an attractive option for manufacturers. For one, they protect a broader range of designs. In principle, any aspect of the appearance of a product's design is covered, including its lines, contours, colors, shape, texture, materials, and ornamentation. RCDs can also be obtained for packaging, parts of complex products, "get-ups," logos and typefaces.

Further, there is no novelty examination for RCDs prior to registration, and, to date, less than .3% of registrations have been invalidated. Although RCDs must have "individual character" to be valid -- possibly a stricter requirement than "non-obviousness" for U.S. design patents -- the "novelty" requirement is stricter in a U.S. design patent.

Since they were launched in 2003, more than 280,000 applications for RCDs have been filed.

The value of obtaining RCD coverage has recently been put in doubt by a key UK Court of Appeal case. Those U.S. businesses looking to take advantage of the above features of the RCD system -- or those that already have them -- should take heed of the implications of this case.

Procter & Gamble v. Reckitt Benckiser

The Facts

The case pitched Procter & Gamble's RCD for the canister of its Febreze air freshener against Reckitt's Air Wick Odour Stop, both of which feature a horizontal trigger spray instead of the conventional vertical button (see the picture of the competing products below).

The UK High Court judge originally had held that Procter & Gamble's design was sufficiently different from the prior art to be valid, and this was not overturned on appeal. The key question on appeal was whether the judge had applied the correct test in finding that Reckitt's product did not produce a "different overall impression" from -- and therefore did infringe -- Procter & Gamble's RCD.

The Judgment

The appeal court held that the judge had made a number of errors in principle, and that the correct test for infringement should include the following criteria. These impose a potentially heavy burden on RCD owners wishing to enforce their rights, and could put the value of their registrations in doubt, in particular in inferior "look-alike" cases.

  1. A product does not infringe if it simply produces a "different" overall impression from the RCD. In other words, the alleged infringer does not need to demonstrate that its product produces a "clearly different" overall impression to escape infringement. This makes it easier for potential infringers to argue that their product is sufficiently different, including where only small differences are involved, depending on the overall impression conveyed by the competing products. (Conversely, a design can only be validly registered if it "clearly differs" from the prior art.)
  2. The differences between the two products are assessed from the perspective of a hypothetical informed average user (as opposed to designer) of other similar products (in this case sprayers generally, not just domestic sprayers) who is deemed to be "fairly familiar" with design issues. That assessment involves carefully reviewing the products side by side to identify any differences, and at not too broad a level of generality. This imposes a higher burden on RCD owners than comparing which differences between the products' overall impressions "stick in the mind" after they have been viewed separately, which is closer to the less burdensome test applied in European Community trade mark infringement cases.
  3. The more strikingly novel a RCD is compared with the prior art, the greater its extent of protection will be. However, smaller differences will be sufficient to avoid infringement where the freedom of design in the relevant field is limited.
  4. Importantly for cases involving inferior look-alikes, a "poor quality" imitation, which does not convey the same overall impression as the original will not infringe.
  5. The key issue is what the products look like, and the place for expert and other evidence in registered design cases is accordingly very limited.

Applying these criteria, the appeal Court held that the similarities between the products were at too general a level to produce the same overall impression on the hypothetical informed average user. For example, the Court's view was that the head of the Febreze sprayer was reminiscent of a snake's, whereas that of the Airwick sprayer was like a lizard's. Reckitt's product therefore did not infringe.

Implications

After the Court of Appeal ruling, the case settled and was not appealed to the House of Lords. Yet, it leaves several issues outstanding in terms of the value of RCDs. In particular, when it comes to look-alike products, it is not clear to what extent the impression of being a "poor quality" imitation will, in and of itself, be sufficient for a product to avoid charges of infringement, in the absence of other significant differences with the original.

What manufacturers should take from this is that they should avoid characterizing potentially infringing products as "inferior" look-alikes.

The judgment also reinforces the importance of filing suitably broad design representations at the initial registration stage: the more general the level of representation, the broader the extent of protection -- subject, however, to making the representations sufficiently specific to avoid invalidation by any prior art.

Tom Carl is a lawyer in the Intellectual Property Practice at Taylor Wessing LLP (London, UK). He can be reached at [email protected] or +44 (0)20 7300 7000.

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