Amanda Michaels

The informed user: a step up from the Clapham Omnibus

The Community Regulation introduced a new design right (registered and unregistered) which
is applicable throughout EU. OHIM is responsible for design registration. But what about
design infringement, is it the national courts or also OHIM who assesses it?

The requirements for obtaining protection are novelty and individual character. Individual
character means that the overall impression of the design has to be different of the overall
impression of anything which is already in prior art. This assessment is not made through the
eyes of the judge / examiner himself, but through the eyes of the 'informed user'. The problem
is how to determine who the informed user is and what knowledge he has. The early years
of the Regulation did not resolve this issue. Finally, one useful judgment came in 2007 by
Lewison J in the UK case of Procter & Gamble v Reckitt Benckiser. This was a case about the
alleged infringement of the Air Wick air freshener spray, whose distinctive shape was
registered as a Community Design. Procter & Gamble, the owners of the design, sued for
infringement in various countries throughout the EU with different results. Lewison J noted
that other decision around Europe might be useful for him, but he is not bound by them.

The UK court found that the design was validly registered and that there was infringement
from the defendant. The case is maybe most important because of its analysis of who is the
'informed user'. The issues analysed by Lewison J were:

1. User of what? User of the class of products indicated in the registration, in this case
sprayers, and not a design or manufacturer of the products nor presumably 'a man
skilled in the art'. However, it's not 'just an ordinary consumer' he is INFORMED.

2. Informed of what and how?

The judge followed the earlier decision of Judge Fysh (Patents County Court) in Woodhouse
UK Plc v Architectural Lighting Systems, where the notion of informed user was an issue
obiter dealt with. In Woodhouse, the product concerned was a street lamp, and the judge
identified the informed user as someone like a 'member of an urban development team
primarily interested in the appearance of street furniture but who also has a basic grasp of a
product's technical underlay and maybe, cost.' Lewison J also relied on two previous OHIM
decisions (Invalidity Division): Eredu v Arrmet and Honda v Kwang Yang Motor Co. In
Eredu, the product was a bar stool and the informed user was simply said to be 'familiar with
the basic features of stools'. In Honda, where the design was for an internal combustion
engine, the informed user would have a higher level of technical knowledge, not just of the
engine's function but also of necessary elements of its layout. These two decisions do not
cross-refer and approach the matter in a slightly different way, but possibly because the less
technical products demenand a less technical informed user (which really does make sense).

Lewison J said that the informed user only has to be aware of the general body of design not
every example of it, because an informed user who is not a designer or manufacturer and has
extensive technical knowledge would be very unlikely to exist in reality. Equally, he would
know of objective factors imposing constraints on design freedom, such as health and safety
rules, but not subjective problems such as the defendant's production line issues.

The judge didn't say who exactly the informed user is in this case, he didn't directly specify
who is the informed user of air freshener sprayers it is hard to see who would qualify on the
technical side without being a designer or manufacturer. Instead, he considered how the
informed user would form an 'overall impression' of the design. First, he held that the
comparison must be between the claimant's design as registered and equivalent elements of
the defendant's products, ignorirng graphics etc. He agreed with the decision in Eredu: 'the
designs must be compared both on their various features taken individually and on the weight
of the various features according to their influence on the overall impression'. It's necessary to
identify similarities and differences; identify the most important features of the two designs
because the informed user focuse primarily on such features. If they do not give a different
overall impression, then it should be considered whether the other parts suffice to change the
impression given by the main elements. This is not the same as the notion of 'imperfect
recollection of the ordinary consumer' in trade mark law.

Iain Russell
Registered designs: prior art and the informed user's 'design awareness'

This article focuses on the case of Gimex International Groupe Import Export v The Chillbag
Company Limited & Others, which was about the transparent bag for wine and ice.
In assessing the similarity between the designs (on the basis of overall impressions), the
informed user will take into account: the degree of the designers freedom; the nature of the
product concerned and the industrial sector applicable to the product. This has caused
controversy because it was (is?) unclear what is the significance of the nature of the
product; and what the indication of product in the application form means

The UK Patents County Courts decision in Gimex International Groupe Import Export v the
Chillbag Company Limited & Others is useful guidance for the response to these issues. The
case concerned Gimexs design registration of a bag meant to chill wine bottles. It previously
registered a design of similar appearance, but for a regular bag, not a cooling bag. Chillbag
claimed that its product did not infringe on Gimexs design, because that design should be
declared invalid because of prior art in Gimexs earlier product
- Judge Birss QC considered the following key questions in detail:
o 1. Does the difference in purpose between the Transline bag and the Ice Bag
mean that the Transline bag is not prior art; and
o 2. Can or should the intended function of the product to which a design relates
be taken into account when considering the overall impression the design
produces on the informed user?
o The answers were no and yes respectively.
o Therefore, in determining prior art every product might be relevant - not only
products in the same industrial sector (Green Lane v PMS), however - for
determining the overall impression on the informed user (scope of
protection), it will be relevant in which industrial sector the product is
used (for which registration has been granted) because the informed
user will be a user of products in that field (not jost 'any' informed user)
o The nature of the product and the industrial sector are not decisive, but
they are a factor which needs to be taken account in examining who is
the informed user and what is his overall impression when comparing
the products. When determining NOVELTY (not ind. character), this issue is
not relevant because prior art is composed of not just that product sector.
Novelty, unlike ind. character, does not depend on an assessment by the
informed user

Matters to be taken into account in assessing overall impression include:
- The degree of freedom of the designer
- The nature of the product
- The industrial sector to which it belongs

All of that is looked at from the perspective of the informed user.