A recent High Court case, Numatic International Limited v Qualtex UK Limited  EWHC 1237 (Ch), concerning the well-known Henry vacuum cleaner has given hope to owners of products whose get-up or shape has become widely recognised by their target consumers.
Numatic sold the first Henry vacuum cleaner in 1981. The cleaner consisted of a number of features, namely a domed black lid resembling a bowler hat and displaying the brand name Henry, a red bottom half with a smiley face and a "nose" where the hose emerged from the side of the tub. Initially, it was sold extensively for commercial use, but about twelve years ago Numatic started to receive requests from large retail outlets to stock the Henry vacuum cleaner, as members of the public wanted to use the cleaner for domestic purposes. At present, approximately half of Numatic's Henry cleaners are sold in the commercial market and half in the retail market.
The black and red Henry is not the only cleaner of its kind to be sold by Numatic. It is part of a range of "named" cleaners featuring different colours, such as Hetty, Charles and George. Numatic had invested heavily in giving the Henry cleaner "an anthropomorphic character and appearance" and it had appeared extensively in advertisements during prime time television. As a result, the Henry cleaner is the biggest seller in this range.
Numatic also sell a range of commercial cleaners, some of which are similar in design to Henry, such as the NRV200, which has a skirt around the bottom of the base and is taller than the domestic Henry. Although these commercial cleaners do not have names, just the word Numatic on them, they still have the smiley face.
Qualtex had been involved in the vacuum cleaner aftermarket for many years. Some time before the end of January 2008, Qualtex decided to manufacture and sell a replica of the 1997 version of the Henry cleaner, using similar colourways (minus the smiley face) and distinguishing branding. In their view, they should not have been prevented from doing so, provided that the relevant design protection had lapsed (which it had) and that they steered clear of Numatic's trade marks, i.e. Henry. To pave the way for this project, Qualtex approached Numatic informing them of their intentions. Numatic informed Qualtex that they owned a valuable goodwill in the appearance of the Henry cleaner, including its shape and get-up, and that they could use this goodwill to prevent Qualtex's use of a similar cleaner by commencing a passing off action. Qualtex were unable to provide a prototype or mock-up of the replica since they had not yet finalised the brand name or insignia for their product.
In March 2009, Qualtex displayed a prototype of the replica on their stand at The Cleaning Show at the NEC in Birmingham. It differed from the typical Henry in that it used a blue/black colourway, was slightly taller and had a skirt (such as the one used in the Numatic NRV 200 model). It did not have any branding on it, but did have a shiny bowler hat style lid. The replica was placed in a prominent position on the Qualtex stand, without any explanatory literature or signage, but was surrounded by other Qualtex products. Shortly after the show, Qualtex decided that they would provide these cleaners either branded with Quick Clean or branded with the customer's own name, as required. In the opinion of Mr Justice Floyd, by April 2009, Qualtex had a "very significant customer interest in a machine to the design of the prototype".
In the meantime, Numatic had commissioned a market research survey designed to establish that Qualtex's replica cleaner would lead members of the public to think it was Numatic's Henry product. In May 2009, they commenced proceedings and sought an interim injunction. Qualtex filed their defence, providing an undertaking that they would not offer or sell the prototype exhibited at The Cleaning Show and stating that they had amended their original design and branding by adding a bumper band and permanent tool caddy support to their cleaner, colouring both top and bottom of the tub blue and labelling it with the words Quick Clean Equipment and Commercial. Numatic had no objection to this version.
However, even after receiving Numatic's letter before action in April, Qualtex had continued in their preparation to produce a replica machine. By May, Qualtex had the final print of the boxes, one of which showed the original prototype without branding as displayed at the show, but the box bore the Quick Clean Equipment brand and stated that the machine was suitable for both domestic and commercial purposes. The other box print showed the machine in green/black and neither the machine nor the box were branded. 100 machines were manufactured to the prototype design in China and shipped to the UK. Further production of these machines was stopped after commencement of the proceedings.
Could Numatic clean up with Qualtex?
Mr Justice Floyd had to decide what, if anything, Qualtex was threatening to do at the commencement of the proceedings, whether this threat continued following service of the defence and whether anything Qualtex threatened to do amounted to passing off. Firstly, he considered that, prior to the commencement, Qualtex was threatening and intending to launch a machine onto the market which significantly resembled the prototype. However, it was his opinion that after the defence was served, this threat no longer existed.
Turning to the passing off issue, Mr Justice Floyd had no hesitation in acknowledging that Numatic had a protectable goodwill and reputation in the combined features of the Henry vacuum cleaner, namely the brand Henry, the black bowler hat lid, a brightly coloured base, the smiley face and nose. He had already concluded that Qualtex was threatening to sell machines to the design of the replica prototype at the date the proceedings commenced. Although Qualtex's machine was intended for the commercial market, he considered that it could end up on the domestic market, displayed in shops, showrooms or on the internet and, based on Qualtex's previous order of the machines, that it was unlikely the machines would be branded before sale.
Numatic relied on their survey evidence to prove that Qualtex's replica amounted to a misrepresentation. Although, the survey evidence encountered criticism from Mr Justice Floyd, on balance he felt that both the survey evidence and Numatic's witnesses demonstrated that there would be origin confusion, which could result in damage to Numatic's goodwill and reputation, and that Qualtex was therefore liable for passing-off. He backed up his decision by stating that:
a) The Henry cleaner does not simply consist of the shape of a functional article (unlike in Hodgkinson & Corby v Wards Mobility). It is seen by the public as having the appearance of a small person and, therefore, the shape has a secondary meaning.
b) It is quite possible that the public would still recognise the Henry cleaner even if one or more of its characteristic elements was removed, provided enough remained to convey the same message. Therefore, the absence of one or more of these features in the replica does not mean that it is distinguishable from the original.
c) The "distinguishing" branding proposed for use on the replica cleaner were the words Quick Clean Equipment. This would be unlikely to avert origin confusion because, firstly, most customers have not heard of Numatic and are unaware that they manufacture Henry and, secondly, Quick Clean is neither distinctive nor well-known.
It is a shame, as Mr Justice Floyd pointed out, that this case ever came to trial, since the replica product at issue was not on the market at the commencement of the proceedings and, due to Qualtex's subsequent amendments to its proposed replica, will never now reach the market. However, it is likely that Numatic proceeded with the action because it needed a decision on costs in their favour due to the significant amount invested in trying to settle this matter prior to the passing off action. Numatic must have been delighted with this result, since, according to their website, the Court awarded them 92.5% of their legal costs!
This decision has confirmed that it is possible to protect the shape and get-up of a product in a passing off action provided that consumers perceive them to have more than just a functional or aesthetic value, that is to say that they view them as a badge of origin.
In theory, this precedent could help others whose design rights have expired to prevent copycats benefitting from their goodwill and reputation. Whether it will in practice assist them in a passing off action is another matter. In this case, the product in question was a very original, anthropomorphic vacuum cleaner which had achieved a high level of recognition and an excellent reputation for reliability over many years. Clearly, although each case must be decided on its own merits, there is a significant burden on any claimant in such a passing off action to prove that a substantial level of recognition and goodwill has been achieved by the shape and get-up of their product and, most importantly, that the latter are perceived as a badge of origin.