In our sister publication Patent issues, we discuss the patents aspects of an interesting suit brought by L’Oréal, makers of a range of range of Clarisonic™, skin cleansing brush products, against RN Ventures in relation to its competing Magnitone™ product.

 

L’Oréal sued for patent infringement and registered community design (RCD) infringement and won on both counts. ([2018] EWHC (Ch)) Here we review the case for design infringement, as it is an excellent case study in how the UK Patents Court assesses the scope of protection of a registered design.

 

The RCD infringement claim

 

Mr Justice Henry Carr assessed the RCD from the perspective of the informed user, whose identity and attributes were set out in Samsung Electronics v Apple. In particular, unlike the average consumer of trade mark law, the informed user

 

• is particularly observant;
• has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned; and neither
  - merely perceives the designs as a whole and does not analyse details nor
  - observes in detail minimal differences which may exist.

 

Henry Carr J explained that if the differences between the registered design and the pre-existing design corpus were small, then small differences might avoid infringement. However, if the differences were great, then the scope of the protection was likely to be wider, and small differences might not avoid infringement. The same logic applied to design freedom:

 

• the greater the designer’s freedom, the wider the scope of the monopoly;
• conversely, the more limitations on design freedom, the narrower the scope of the monopoly.

 

In his view, the informed user in the present case was the “observant user of powered skin brushes”.

 

Although the Magnitone^TM products and the RCD differed in some details, the question was one of overall impression. L’Oréal and RN Ventures presented single sheets that depicted images of products said fairly to reflect the design corpus, which was then compared with images from the RCD.

 

Henry Carr J accepted that all of the powered skin brushes shown overleaf were part of the design corpus (apart from a manual scrubbing brush included in RN Venture’s selection, which was undated and excluded from consideration).

 

He confirmed that following the CJEU’s decision in Easy Sanitary:

 

it is not necessary for it to be established that the informed user would know of an item of prior art for it to be considered as part of the design corpus.

 

As Henry Carr J noted, the design corpus showed “a variety of shapes of powered skin brushes” which, “at a high level of generality”, were “cylindrical or wedge-shaped devices, with a single brush head, with elongated handles with straight or slightly waisted sides, with some form of attachment area for the brush head”. In contrast, “the Design is of a sculpted shape which narrows in the middle into an hourglass with a very distinctive bulbous head with curved sides and castellations around the brush”.

 

He found that the RCD was significantly different from the design corpus, and the expert evidence confirmed that there was a “wide degree of design freedom”.

 

Following these findings, Henry Carr J reached the conclusion that each of the Magnitone^TM products created the same overall impression as the RCD, and therefore infringed it.

 

Comment

 

Rights holders will find some encouragement in this finding of infringement of L’Oréal’s design, as it runs against a current of recent rulings from the higher courts that have been less than sympathetic to design owners, in particular:

 

• Apple’s iPad shape, whose registered design was found to be valid but not infringed by the Court of Appeal (Samsung Electronics v Apple [2012] EWCA Civ 1339);
• Proctor & Gamble’s Febreze^TM air freshener spray shape, whose registered design was found to be valid but not infringed Procter & Gamble v Reckitt Benckiser [2007] EWCA Civ 936 and
• Magmatic’s Trunki^TM children’s suitcase, whose registered design was held valid but not infringed by the Supreme Court (PMS International Group v Magmatic [2016] UKSC 12, reported in Summer 2016 Design features).