Quite a few years ago now, we thought it would be fun to look at some decisions on registered design validity and infringement and put together a quiz. The quiz is still available on our website. For each of thirteen pairs of designs the question is apparently simple: do the two designs shown produce a similar overall impression on the informed user? As we said at the time, the quiz isn’t really fair because by showing only the pictures of the designs, many of the background facts and considerations taken into account by the court in each case are simply ignored.
Similar or the same?
But recently someone pointed out a more fundamental issue – is it right to say that the legal test is about “similar overall impression”, or is the test that the overall impression has to be the same?
The EU Directive and Regulation actually say neither. Rather, the test for infringement, in terms of the scope of protection, is expressed in the negative:
“The scope of the protection conferred by a design right shall include any design which does not produce on the informed user a different overall impression.”
Likewise when assessing validity the test is expressed in terms of whether the design differs from what has gone before:
“A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing…”
On the face of it, that might settle the question. If something is “not different” then it is “the same”. If something is “not very different” then perhaps it is “similar” but the articles of the Regulation say “different”, not “very different”. Except that if you look to the recitals of the Regulation, you get more or less exactly that (emphasis added):
“Whereas the assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus…”
If something doesn’t “clearly differ” then that sounds a lot like it might be “similar” even if not “the same”.
The “clearly differs” wording has not been carried through from the recitals into the body of the Regulation, and neither has the idea of the “design corpus”. Although the discrepancy, if it is that, has been noted at times by the courts, I am not aware that there has been any particularly definitive answer to it, in terms of the test for validity.
There is more clarity though when it comes to infringement. Indeed, the problem was tackled in the first ever EU Registered Design case to reach the Court of Appeal, back in 2007. In Procter & Gamble v Reckitt Benckiser Lord Justice Jacob declined to import the “clearly differs” wording into the test for infringement, saying that “different policies are involved [for validity and infringement]”. For infringement:
“It is sufficient to avoid infringement if the accused product is of a design which produces a “different overall impression.” There is no policy requirement that the difference be “clear.” If a design differs, that is enough – an informed user can discriminate.”
“…the test is “different” not “clearly different.”
“… the court should ask whether the overall impression of each is different. This is almost the equivalent to asking whether they are the same – the difference is nuanced, probably, involving a question of onus and no more.”
More recently in Pulseon v Garmin the Court of Appeal rejected an argument that the High Court Judge had erred by “asking himself whether the accused devices would produce an identical impression on the informed user”:
“In my judgment, despite the language which he chose… the judge did not apply an incorrect test. By saying that the designs did not create an identical impression, the judge was deciding that the impressions were different”.
The importance of overall impression
So, for infringement of a registered design the test is “not different”, which is almost equivalent to “the same” or “identical”. But what is it that has to be the same? It is the overall impression on the informed user. In a contested allegation of registered design infringement, the nature of the overall impression is likely to be a key battleground. After all, once the overall impression of a registered design and the overall impression of an accused infringement have been defined, asking whether or not they are the same ought to be fairly straightforward.
The overall impression will depend on a range of factors. It is an inherently subjective test but in an effort to try to impose some consistency, the legislators have told us that we must look at overall impression through the eyes of the notional “informed user”. Constraints on the designer must be taken into account, as well as the informed user’s knowledge of the design corpus. My previous article which went with the quiz deals with some of these factors in more detail.
It is clear that formulating the overall impression is a critical part of correctly assessing infringement. From Procter & Gamble again:
“The court must identify the “overall impression” of the registered design with care. True it is that it is difficult to put into language, and it is helpful to use pictures as part of the identification, but the exercise must be done.”
The importance of correctly formulating the overall impression, which could perhaps be characterized as “what the informed user thinks about the design when he sees it” is illustrated in the well known “Trunki” decision. The Court of Appeal, overturning the High Court, said that the trial judge had fallen into error by failing to appreciate that the overall impression was a suitcase which looked like a horned animal. Whether that is a correct statement of the overall impression or not may be a matter of opinion. The trial judge’s assessment is not in my opinion clearly faulty but his judgement does not clearly state what the overall impression actually is, rather focusing on lists of similarities and differences and the relative importance of the similar or different features. On that basis the Court of Appeal found themselves able to come to their own view.
In summary then, to determine whether an accused design infringes you have to ask:
- What is the overall impression of the registered design?
- What is the overall impression of the accused design?
- Are they the same?
At step 1, the prior art needs to be taken into account, firstly because the overall impression will need to be formulated in such a way as to ensure that the design is valid over any particular piece of prior art, but also because the corpus of prior designs has an effect on the impact the design will have against that background. Jacob LJ again in Procter & Gamble:
“…if a new design is markedly different from anything that has gone before, it is likely to have a greater overall visual impact than if it is “surrounded by kindred prior art.” (HHJ Fysh’s pithy phrase in Woodhouse at ). It follows that the “overall impression” created by such a design will be more significant…”
For a strikingly new design, it will be possible to formulate the “overall impression” at a higher level of generality while still ensuring that it is different from any particular known design. At the same time, that higher level of generality will truly reflect the impression the informed user gets when they see a design the likes of which they have not seen before. Once the overall impression has been formulated at a higher level of generality, a wider range of different designs can be seen to have the “same overall impression” and therefore infringe the registered design.
Still, it is not easy to say that one lawyer’s formulation of the “overall impression” will certainly be the same as another’s, try as they both might to be objective and apply the test through the goggles of the informed user. Design infringement is always going to be an inherently uncertain question, but by carefully following the correct tests, hopefully at least some clarity can be found.
 The Directive being the source of law for EU harmonized, but national, registered designs, and the Regulation being the source of law for EU-wide “Community Registered Designs”. As far as is relevant to this article, both say the same thing.
 And again, the Directive is exactly the same.
 Though in Karen Millen Fashions v Dunnes Stores C-345/13 the European Court of Justice gave some indication that the articles simply trump the recitals, in rejecting a view that individual character had to be assessed against the design corpus as a whole as opposed to each prior design individually.
  EWCA Civ 936
  EWCA Civ 138
 Magmatic v PMS  EWCA Civ 181 on appeal from  EWHC 1925 (Pat). The Court of Appeal’s intervention was subsequently upheld by the Supreme Court.