Procter & Gamble Company v Reckitt Benckiser (UK) Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Lewison |
| Judgment Date | 13 December 2006 |
| Neutral Citation | [2006] EWHC 3154 (Ch) |
| Court | Chancery Division |
| Date | 13 December 2006 |
| Docket Number | Case No: HC 06 C00362 |
[2006] EWHC 3154 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
MR JUSTICE LEWISON
Case No: HC 06 C00362
Mr Roger Wyand QC and Mr Dominic Hughes (instructed by Howrey LLP) for the Claimant
Mr Henry Carr QC and Mr Hugo Cuddigan (instructed by Bird & Bird) for the Defendant
Hearing dates: 29 and 30 November and 1 December 2006
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic
The Hon. Mr Justice Lewison
Introduction 2
The registered design 3
The development of the design 3
The process 3
The features underlying the design 4
Success of the design 4
The new Air Wick cap 4
The process 4
The result 7
The Regulation 7
Some matters of interpretation 12
Interrelationship between validity and infringement 13
What is protected? 13
Informed user 14
Design freedom 17
What is being compared? 18
Overall impression 20
Decisions in other European jurisdictions 21
Vienna Commercial Court 21
Brussels Court of First Instance 21
Evry Commercial Court 22
Law Court of Milan 22
The expert evidence 22
Similarities and differences 22
Do colours and graphics make any difference? 24
Validity 24
The riot spray 24
The Chinese design 24
The Contico housing 25
Result 25
Introduction
The protagonists in this case are both multi-national corporations whose business includes selling domestic air spray fresheners. Procter & Gamble's product is called "Febreze" and Reckitt Benckiser's is called "Air Wick Odour Stop". Procter & Gamble sell Febreze in the United States of America and in many member states within the European Union. In some of those markets (but not yet in the United Kingdom) Febreze is packaged in a custom designed canister surmounted by a trigger within a housing. Pressure on the trigger releases the spray. The design of the package is registered as registered Community design No 000097969–000Procter & Gamble allege that the package in which Air Wick Odour Stop is packaged infringes the registered Community design.
Mr Roger Wyand QC and Mr Dominic Hughes appear for Procter & Gamble; and Mr Henry Carr QC and Mr Hugo Cuddigan appear for Reckitt Benckiser. Both Mr Wyand and Mr Carr agree that this is a straightforward case. But there the agreement stops, because each of them says that the straightforward case is that their clients win.
Mr Carr also says that if his client's product would otherwise infringe the registered design, the differences between that product and the registered design are such that, in the light of pre-existing products and designs, the registered design must be invalid.
The registered design
The category of product to which the registered design was intended to be applied was described as "sprayers". Representations of the designs are reproduced below:
The development of the design
The process
In May 2002 Procter & Gamble's North American Febreze brand product development team were given the task of developing a new package for Febreze. The design was to incorporate three dimensional design elements in order to make the packaging very distinctive. Ms Naomi Nelson was in charge of the aesthetic appearance of the package; and Mr Christopher Bates was involved in its technical capability. Both gave evidence, which I accept. Jones Garrard, a UK design consultancy, were commissioned to come up with designs; and they were given wide freedom to develop their designs. They came up with ten designs, which were reviewed in the following month. It was decided to develop a design with what Ms Nelson described as a "trigger concept", which had generated interest. It is not easy to discern a trigger in any of the early prototypes. Jones Garrard then produced ten white foam models developing the selected design. These ten were whittled down to four. One of these four, designated "T", was the one that was ultimately selected for further development. This design went through several iterations and ended up as the registered design.
Mr Bates' involvement was on the technical side, to make sure that the design worked. He described the design as having been led by aesthetics rather than by technical considerations.
The features underlying the design
Up to this time it had been conventional for aerosol air fresheners to deliver a spray vertically released by pushing a button on the top of the canister; and the angled spray was new. Trigger operated mechanisms, by contrast, tended to expel fluid horizontally. Trigger operated mechanisms had not previously been used for air fresheners.
The winning design was chosen because it had a very distinctive look. Important features which gave it that look were its narrowed neck; its angled and elliptical top; its integrated look, especially the way that the top blended in with the body of the container and its flowing lines. The ergonomic aspects of the design were also important. One of the reasons for the choice of the angled top was that it would signal to consumers the direction of flow of the spray exiting the nozzle. The top of the head of the spray was flared out more in later iterations. This had the advantages both of making the hand grip of the container easier and also provided a flange which helped in preventing the container from slipping through the user's grip. It was also said that the flanged top helped to support the weight of the product, thus avoiding fatiguing the wrist; but since the product is lightweight and not held for prolonged periods, this did not seem to me to be a particularly important feature. The curves of the can and the head merge around the neck giving the product an integrated feel. The narrowed neck, as well as being more aesthetically pleasing, also made the container sit more easily in the hand. However, the fact that the container was not a simple cylinder meant that it would have to be custom made. The container was in fact manufactured from aluminium, rather than the conventional tinplate.
Overall, the shape of the design had a smooth and dynamic feel, flowing lines, and an elegant sense of movement.
Success of the design
The Febreze product was well-received within the packaging community. At the end of 2004 it won the New Jersey Packaging Executives Package of the Year Award. In 2005 it won the Ameristar Award within the category of household products. The citation for the latter award said:
"Febreze Air Effects is packaged in a uniquely shaped aerosol can that breaks category norms, stands out on the shelf, is easy to use and delivers a superb scent experience for consumers. Febreze redefines the difference a great product and a unique package can make in a customized container and actuator."
The new Air Wick cap
The process
Towards the end of 2004 the marketeers within Reckitt Benckiser wanted to launch an "Odour Stop" sub-brand within the Air Wick brand. This would be a spray which would tackle odours rather than simply mask them. The designers were given two briefs. One was a brief from the marketing people describing the Air Wick brand and the message to consumers that they wanted to convey. The other was a technical design brief for the new container. Only the latter was in evidence. Mr Butler prepared the technical design brief. By the time he came to compile the design brief Mr Butler had become aware of Procter & Gamble's registered Community design; and one of the instructions in the design brief was that there should be no infringement of intellectual property rights. I accept that this was a genuine instruction; and that Reckitt Benckiser had no desire to infringe the registered Community design. The technical design brief is formulated in such a way as not to stunt the creativity of the designer.
The technical design brief began by saying that:
"This new product is likely to be sold at a premium to our existing range of aerosol air fresheners and as such we are looking for unique packaging to differentiate it from the standard range."
The marketeers had looked at a range of products and had decided that the two best options to consider were a spray actuated by a trigger and a spray actuated by a lever. So far as a trigger was concerned, there were again two options. One was to buy in a standard trigger and aerosol assembly, and cover it with a decorative shroud. The second was to have a custom aerosol trigger assembly manufactured with a decorative shroud. The second option gave more design flexibility, as it would enable Reckitt Benckiser to specify more of the trigger design and also to specify a spray direction between horizontal and 30 degrees from horizontal. The general requirements of the brief included the following:
"The spray cap must suit a standard 52mm (300ml) European tinplate aerosol fitted with a standard 1" continuous valve – this can be either a vertical or tilt action valve
The method of actuating the aerosol is to be via a 'trigger' or 'lever'. The trigger routes will be similar to a standard trigger spray as used on bottles of household cleaner… The action of actuation for both trigger and lever must be easy (not too high a force required), and also obvious to the consumer and ergonomic.
A pumping action will not be required – depressing the 'trigger' will open the aerosol valve for a continuous spray"
Under the heading "Specific design requirements" the brief said:
"Ideally all dimensions of the assembled trigger should lay within the external diameter of the aerosol can i.e. 52mm. This...
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