vendredi, juin 25, 2010

United Kingdom: Product shape protected in passing-off action

Product shape protected in passing-off action

Contributed by Reynolds Porter Chamberlain LLP


Introduction

For the first time since the three elements required for passing off were restated by the House of Lords 20 years ago in Jif Lemon,(1) a product shape has been protected in a passing-off action.(2) The High Court found that the shape of a vacuum cleaner, combined with some of its get-up, had sufficient reputation and goodwill to be protected in a passing-off action from competitors replicating the design and get-up.

The decision contradicts the principle that persons wishing to copy a design are free to do so where all relevant IP rights have expired.

Facts

The claimant manufactured a range of vacuum cleaners for commercial and domestic use. Its best-known vacuum cleaner was called the Henry. It was described as "having the appearance of rather a rotund cheeky chappie with its smiling face, bowler hat and name". The Henry was a tub shape in red plastic topped with a domed black lid, which some people recognized as a bowler hat. Below the bowler hat was a smiling face applied by decal. The 'nose' was the hole to which the vacuum hose was connected.

The claimant also made a range of commercial cleaners, with a smiling face and the word 'Numatic' in place of a name.

The defendant was involved in the vacuum cleaner aftermarket. At the beginning of 2008, it decided to manufacture and sell a replica of the Henry vacuum cleaner. The defendant wrote to the claimant, explaining its intention and making clear that it would not use the 'Henry' name or face. The defendant did not know at that stage what branding or colourways it would use. The claimant asserted goodwill in the appearance of the Henry vacuum cleaner, including the shape and get-up, and asked for undertakings that the defendant would not market a replica of the Henry. No such undertakings were provided.

In March 2009 the defendant exhibited a prototype of the Henry replica product at a cleaning exhibition. The prototype replica had no brand name nor face decals. Although it had a blue base - unlike the Henry, the bowler-hat lid was black. The prototype replica was based on a replica of one the claimant's Henry-like commercial machines.

There was significant interest in the prototype replica as a result of the exhibition and orders were placed. The claimant again sought undertakings that the defendant would not sell vacuum cleaners similar to the Henry. Again, no undertakings were provided. Therefore, the claimant commenced proceedings in May 2009.

In July 2009 the defendant undertook not to sell vacuum cleaners having the appearance of the prototype replica. Despite the fact that the defendant did not put on the market any vacuum cleaner similar to the Henry, the matter went to trial.

The court was asked to consider the following questions:

  • What, if anything, was the defendant threatening to do at the date of commencement of proceedings?
  • Did a threat exist after service of the defence?
  • Did anything which the defendant threatened to do amount to passing off?

Elements for passing off

In a get-up case, in order to succeed in a passing-off claim, the claimant must show:

  • goodwill or reputation attached to goods or services by association with the identifying get-up, so that the get-up is recognized by the public as being distinctive of the claimant's goods or services;
  • misrepresentation by the defendant to the public so that the public believes the defendant's goods or services to be those of the claimant's; and
  • actual or likely damage as a result of the misrepresentation.

Decision

Threat
The judge found that the defendant was threatening to distribute machines that looked like the prototype replica. Arguments that the replica had been unbranded and unfinished were rejected. The decision to change the appearance of the prototype replica after the commencement of proceedings was not part of its natural development. The threat ended after the defence was served.

At trial, it was not disputed that the get-up of the Henry had sufficient goodwill and reputation.

Misrepresentation
The judge considered whether the sale of the prototype replica - which lacked the smiling face decal and the name 'Henry' - would have constituted damaging misrepresentation.

The claimant supported its case by relying on a survey of 535 people; it served evidence from 25 of them. The judge criticized both the form of the survey and the questions asked, but held that they provided enough evidence for him to conclude that the shape and bowler-hat lid prompted a strong recognition of the Henry. Based on the oral evidence provided, the judge concluded that the design of the prototype replica conveyed the message that it was a genuine Henry. There was a likelihood that at least some members of the public would buy it in the belief that it was a Henry.

The judge considered that the Henry shape was not simply functional. It had acquired a secondary meaning, being recognized as having the appearance of a small person.

The absence of some of the features of the Henry get-up, such as the name and smiling face decal, was insufficient to avoid confusion; nor would branding have been enough to prevent that risk of confusion.

Comment

The decision is unlikely to lead to a flood of successful passing-off cases protecting product shapes, as the facts of the case were unusual.

The secondary meaning of the Henry shape sets this case apart from previous cases.(3) A feature of the case is that the judge was prepared to place some reliance on the survey evidence as showing the extent of recognition of the Henry. He stated that without the defendant's cross-examination, the claimant would have had no real evidential support to show the necessary ingredient of confusion from members of the public. It must be galling for the defendant to know that but for its cross-examination, it would probably have won. However, it would be a bold move not to try to challenge a claimant's 'confused' witnesses.

For now, at least, Henry is safe from competition from other "rotund cheeky chappies" in the vacuum cleaner market.

For further information on this topic please contact Andrew Hobson or Tamar Shafran at Reynolds Porter Chamberlain LLP by telephone (+44 20 3060 6000), fax (+44 20 3060 7000) or email (andrew.hobson@rpc.co.uk or tamar.shafran@rpc.co.uk).

Endnotes

(1) Reckitt & Colman Products Limited v Borden Limited [1990] 1 WLR 491.

(2) Numatic International Ltd v Qualtex UK Ltd [2010] EWHC 1237 (Ch), May 28 2010.

(3) Hodgkinson & Corby v Wards Mobility [1994] 1 WLR 1564.