A High Court ruling in favour of the manufacturers of the always cheerful Henry vacuum cleaner held that a rival’s proposed replica would have deceived consumers and shows that goodwill in a business selling distinctive products may be protected even after design rights have expired. Jonathan Mayner cleans up.
Topic: Intellectual Property
Who: Numatic International Ltd v Qualtex UK Ltd
When: May 2010
Law stated as at: 29 June 2010
Qualtex UK Ltd ("Qualtex") was found liable under the law of passing off for threatening to bring a vacuum cleaning product to market which would, by its appearance and get-up, be likely to deceive consumers into thinking that it belonged to the well-known "Henry" range of vacuum cleaners manufactured by Numatic International Limited ("Numatic"). As the claim was brought before the allegedly infringing product was made available to the public, no consumers were ever exposed to the potential confusion and the claimant did not suffer any actual loss other than the costs of bringing the claim.
Since around 1981, Numatic has sold a vacuum cleaning product referred to as the Henry. The Henry comprises a tub-shaped body, typically in red, but also available in other colours, on which is printed the features of a smiling face. The hole into which the vacuum's hose connects with the machine serves as a nose and the anthropomorphic effect is completed by a shiny black dome reminiscent of a bowler hat, on which is printed the name, "Henry". Originally manufactured for the commercial market, versions of the Henry have been manufactured for retail to domestic consumers since the late 1990's, and the machine enjoys a significant level of recognition in the commercial and retail markets, in the main due to its distinctive get-up.
Qualtex decided to manufacture a replica of the Henry machine believing that they would be able to do so unimpeded if they chose a design in which all relevant registered or unregistered design rights had expired and if they refrained from using any of Numatic's registered trade mark such as the name "Henry". Qualtex's solicitors wrote to Numatic in January 2008 to inform them of a proposed replica which would not bear the Henry name or the smiley face. Correspondence between the parties concluded in April 2008 with uncertainty as what precisely the replica would look like and whether the similarity of the tub-shape and "bowler hat" elements would of themselves be grounds for a claim in passing off.
A prototype of the replica was displayed on the Qualtex stand of the Cleaning Show at the NEC in Birmingham in March 2009 (the "Show"). The machine had no branding or smiley face applied to it, but did comprise a tub-shaped body with the black dome / "bowler hat" top. The replica also featured a skirt or flange at the base of the body which was not present in domestic models of the Henry, but which was a feature of some Numatic's commercial models in the Henry range. On 19 May 2009 Numatic commenced proceedings for passing off against Qualtex.
Passing off is a common law tort, the underlying principle of which is that one should not sell one's own goods under the pretence that they are the goods of someone else. In general, to succeed in a claim for passing off, a claimant will have to show that there is reputation or goodwill attached to the goods or services in question (in this case the Henry) and that the defendant has intentionally or otherwise represented its own goods or services in such a way as to be likely to mislead the public into believing that their goods or services are those of the claimant. Additionally, the claimant must usually have suffered some loss as a result of the defendant's actions. In this instance the claim was brought before the replica was marketed and sold, so no damage was caused to Numatic by way of lost sales or dilution of their goodwill in the Henry.
Quia Timet – claiming before loss
It is possible in some circumstances to bring a claim in anticipation of a loss that would be caused if another party were not prevented by the court from pursuing a particular course. In the main a claimant in such circumstances would have to show that there was a danger of imminent and irreparable damage to their rights. Such claims are said to be brought on a quia timet basis, quia timet being Latin for "because he fears", referring to the threat of damage and loss, rather than actual damage and loss. As is common in quia timet actions, in this instance Numatic secured an interim injunction against Qualtex to prevent them from selling vaccum cleaners "having the appearance or substantially the appearance of" the replica. Qualtex did manage to carve out an exception to this prohibition with reference to a picture of a variation on the design which was included in an annex to their defence statement. They would be allowed to sell vacuum cleaners corresponding to this variation on the design, which differed from the Henry and the replica as it had the word "commercial" printed on the body and featured a tool caddy in place of the "bowler hat" element.
At trial, the court considered that there was no real dispute that Numatic had reputation and goodwill in the get-up of the Henry that was capable of protection under the law of passing off. In view of that reputation, the sale of a replica of the Henry, even one which lacked one or more of the Henry's key features would likely constitute a damaging misrepresentation to consumers that the replica was manufactured by the same people who manufacture the Henry. Accordingly the court held that between the date of the Show and the commencement of proceedings, Qualtex had indeed been threatening, and fully intended to, manufacture and sell such a replica.
In satisfying itself that a misrepresentation likely to deceive the public would have occurred if the replica had been offered for sale, the court considered evidence gathered by Numatic by way of a survey of 535 people from the United Kingdom Some of the respondents to this survey also submitted witness statements and were subjected to cross-examination. In the main the survey evidence strongly supported the contention that consumers were likely to be misled by the appearance of the replica into thinking that it was a genuine Henry. While this contention was weakened somewhat under cross-examination, the court ultimately held that there was a real likelihood that at least some members of the public would buy the replica under the impression that they were buying a genuine Henry.
Qualtex was therefore held liable and the quia timet passing off action succeeded. In this case only costs will be awarded as there can be no award of damages for lost sales or account of profits due to the fact that the replica was never sold. At the time of writing, no decision has been made on costs.
Why this matters:
Most businesses will have reputation and goodwill which is capable of protection under the law of passing off. This case illustrates that when a business is aware that another party threatens (intentionally or not) to dilute, undermine or otherwise damage that goodwill it is not always necessary to wait until damage has actually been caused – a claim can be brought before the loss occurs on the basis of the threatened actions of the other party, although it is likely that only costs would be recovered.
The ruling also shows that passing off may be established on the basis of a functional article which has acquired a secondary meaning to consumers (in this case the distinctive anthropomorphised character of the Henry) and that the protection afforded to that article will continue to apply to the product even after any design rights have expired.