But how different is different enough? The law goes on to say that a design has individual character if it “produces a different overall impression on the informed user”. Arguably, this definition asks more questions than it answers – questions which have occupied the minds of lawyers and judges in various infringement and validity cases over the years. It may be that the test for individual character can never be truly objective, but there is now a reasonable body of case law setting out how an assessment should be made, and so a consistent and predictable approach should be possible.
Who is the informed user?
The informed user is reasonably observant and circumspect, is a regular user of the sort of articles which are in question, and has wide knowledge of what is available on the market. The person we are looking for is not an “average consumer” – he is much better informed than that. On the other hand, the informed user is definitely a user. He is not a designer himself, and does not have special technical knowledge. Perhaps a helpful characterisation of the sort of person we are trying to imagine is that they are a “fussy customer”.
Although it may sometimes be difficult to find a real person who fits the description of the somewhat hypothetical “informed user”, some account should be taken of the practical realities of the market. For example, the informed user of a child’s toy must surely be a child, and the assessment of overall impression must in that case include a realistic view of how attentive the informed user really is.
Constraints on the designer
According to the European Regulation, “in assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration”. If the designer has little freedom, then small differences may give rise to individual character.
The degree of freedom of the designer comes from the practical considerations which must be applied when designing products for use. The designer of a product which has some functional purpose will have far less design freedom than the designer of a product which is purely ornamental. Note that this is not the same as the exclusion of parts which are dictated “solely by technical function” (see below) – the designer is constrained not just by what actually won’t work, but also by what is clearly bad design. For example, a handle should be ergonomic and comfortable. The device would still work is the handle was awkward and uncomfortable, but nonetheless the designer is constrained by the need to make a good design.
There are various exclusions which apply to the types of products which can be protected by registered designs. These features must therefore be excluded from an assessment of individual character. Parts which are “solely dictated by technical function”, parts which “must fit” another product (e.g. connectors), and component parts of complex products which are not visible in normal use are all excluded from protection and are therefore irrelevant to individual character.
Similarities and differences
If the question of overall impression is being seriously considered, then presumably there are two designs which have some similarities and some differences. Lawyers arguing for a different overall impression are often fond of coming up with a long list of differences. After reading their arguments (without the benefit of pictures) you might be amazed to find that two products which are apparently so different in fact produce the same overall impression! But what must always be taken into account is that it is the overall impression of the design which is being tested. If the similarities are more visually striking than the differences, then the fact that the list of differences is a long one is irrelevant. What must be compared is the whole design.
Too much emphasis should not be placed on verbal analysis of the similarities and differences between two designs. Jacob LJ has repeatedly emphasised that the most important thing about the registered design, the alleged infringement, and the prior art is what they look like.