he High Court in the case of Numatic International Ltd v Qualtex UK Ltd  EWCH 1237 (Ch) has recently given a judgment involving Henry the vacuum cleaner.
The judgment considers the scope of protection afforded in an action for passing-off concerning the shape of a product that has come out of design protection. Henry the vaccum cleaner is extremely distinctive and contains a number of unique features: the black bowler hat, the red ‘smiley face’ and the ‘nose’ which formed the suction hose of the vacuum cleaner.
Numatic International Ltd (Numatic) had sold the Henry vacuum cleaner in the UK domestic market since the early 1980’s. It also sold other similar models, most notably ‘Hetty’ which had a pink ‘face’ instead of a red one. In the commercial market Numatic also sold the NRV200 which was similar in appearance to Henry but had a skirting around the base.
Numatic issued proceedings against Qualtex UK Ltd (Qualtex) for passing-off and issued an application for an interim injunction. Qualtex, at some stage before 2008, had decided to make and sell a replica of Henry the vacuum cleaner because the design protection for Henry had expired in 2008.
Qualtex attempted to clear the way with Numatic through correspondence. Qualtex confirmed to Numatic that while it was intending to sell a replica product to the Henry, it would not use the smiley face and would use distinguishing branding. However, Numatic responded that it was the owner of the goodwill in the appearance of the Henry including its shape and get-up and that any attempt to market a replica would amount to passing-off.
The final straw for Numatic was when Qualtex exhibited the replica product at the Cleaning Show in March 2009. The replica product bore close resemblance to Numatic’s NRV200 model (having a black bowler hat, skirting round the base and a blue base, but no smiley face).
The product was unbranded but was offered for supply with either Qualtex’s branding ‘QuickClean’ or left unbranded so that the purchaser could apply their own branding.
The High Court had to consider whether Qualtex’s replica would deceive consumers into believing that it was in some way connected to Numatic. Mr Justice Floyd clarified that it was settled law that it was more difficult to acquire reputation/goodwill in the shape or get-up of a product, as historically shape or get-up of a product was not considered to be an origin indicator by consumers. Mr Justice Floyd gave the example that if a consumer saw two shapes that were identical a consumer would not necessarily think that they came from the same source. Therefore, it is for any claimant to prove that the shape or get-up of a product has come to denote origin in the minds of the relevant consumer.
The High Court stated that Henry the vacuum cleaner was protected by goodwill due to the combination of features such as the black bowler hat, the red smiley face and nose. It is noteworthy that Numatic had invested heavily in the promotion of the anthropomorphic nature of its vacuum cleaner in its advertising. For example, Mr Justice Floyd referred to a newspaper article which said “the Henrys look like small, squat, smiley-faced, bowler-hatted blimp on casters”. The evidence suggested that marketing of the Henry had personalised the Henry to more than just a shape in the minds of the public.
The High Court assessed whether the replica product was capable of making a damaging misrepresentation. However, because no sales of the replica had yet been made, the court had to make some assumptions based on the evidence as to how the replica was likely to be sold to the public.
Mr Justice Floyd concluded that Qualtex’s replica would lead customers to be confused as to origin and that there had been passing off. The following arguments were used to support this decision:
Numatic’s Henry was not just a functional article. The public clearly viewed the Henry as having the appearance of a small person – in other words the shape of the product had become “characterised” and had gained a secondary meaning (not purely functional);
Qualtex’s replica was recognised by the public as being very close to the Henry – even if some of the distinctive elements were missing (i.e. the smiley face and red colour); and
Even if Qualtex was going to sell the replica as a branded product ‘Quickclean’, this may not have saved it from being liable in passing-off. Firstly, most customers did not know that the Henry originated from Numatic so any branding may not have reduced origin confusion. Secondly, ‘QuickClean’ was neither distinctive nor well-known.
This decision shows that passing off can be extended to protecting the shape of a product. However, it is clear that the judgment placed a great deal of weight on consumer’s perception of the Henry product which was more than just functional.