New EU Design Law In Practice: A New Area Of Disharmony?

When the new EU designs regime came into being in 2002 it was intended to do two things: i) create new EU-wide Community design rights, and ii) harmonise existing national registered design law. The material aspects of the regimeó how to assess infringement and validityóare the same for both national registered rights and Community rights.

As with any new legislation, it raised several questions of interpretation. In particular, infringement and validity both involve assessing whether two designs create the same "overall impression" on the "informed user". Both of these are new concepts that immediately created an interpretation issue: who is the informed user, what is the overall impression of a design and how should it be assessed?

The new legislation is now beginning to be tested in the courts as the first infringement cases (as opposed to OHIM validity challenges) are coming to trial. One of these, Procter & Gamble v Reckitt Benckiser, is particularly interesting because it involved the courts of no fewer than six EU Member States all considering whether the alleged infringement did, or did not, create the same overall impression as the design, on the informed user. The results, at both first instance and on appeal, are interesting.

The Design

The design in question was for a sprayer, and is depicted below. Alongside it is shown the alleged infringement. It was suggested that some of the features of the design, such as the trigger and shape of the neck (which functions as a grip), were "solely dictated by technical function", but in none of the proceedings did such arguments succeed. This is perhaps because the relevant provision of both the harmonising Directive and the Regulation that created the Community rights, which precludes protection for features solely dictated by technical function, had already been interpreted very narrowly by both the European Court of Justice (at advocate general level) and the English Court of Appeal. Both have said that only features that have just one way of being implemented are denied design protection.

Accordingly, in each of the proceedings, the question to be answered was whether the alleged infringement created the same overall impression on the informed user as the registered design. On that question, infringement was found nine times, including two appeals and non-infringement found three times (in each case on appeal).

The Decisions

It should be noted that the only substantive proceedings took...