When picking a vacuum cleaner design, watch for the sucker punch ...

In a world of sadness and misery, a smiling face can make all the difference. This was perhaps what Qualtex UK thought, when they wiped the smile off the face of Henry the Smiling Vacuum Cleaner. Qualtex, one of the UK's less successful IP litigants in recent years (see here and here), must have had the smile wiped from their own faces when they lost again -- this time in Numatic International Ltd v Qualtex UK Ltd [2010] EWHC 1237 (C), a Chancery Division ruling from Mr Justice Floyd on 28 May.

In this action Numatic sued Qualtex for passing off. Numatic was the maker of the beloved Henry vacuum cleaner. Henry was basically a tub with a domed black "bowler hat" lid, below which a red cylinder bore a printed smiling face, the hole where the hose emerged serving as his nose. Numatic had invested significant resources in giving Henry an anthropomorphic character and appearance. Apart from looking cute, Henry was a hard and effective worker who earned his reputation through years of successful use.

Qualtex, which also made vacuum cleaner markets, planned to make and sell a Henry replica -- but without Henry's name or smiling face -- and told Numatic accordingly. Numatic said it had rights in the shape even independently of the name, face and the red- and- black livery, and [while no doubt delighted at the prospect of such close competition] asked Qualtex for undertakings not to market the product. Qualtex promised to take active steps to distinguish its product but, at a subsequent cleaning trade show, exhibited a prototype of the product which, while blue, faceless and sporting a circumferential flange or skirt around its base, had a bowler-hatted lid in shiny black.

Numatic issued quia timet proceedings [How funny that this Latin tag has survived, when other Latin, and indeed English, words were driven from the legal system by the previous government] and applied for an interim injunction, and Qualtex promised not to sell vacuum cleaners with that appearance. Qualtex also argued, that since the cleaning trade show, it had done further work on the design and branding of the prototype and that the machine which it intended to sell had a bumper band and tool caddy, with the words "Quick Clean Equipment" and "Commercial" on it.

In these proceedings the judge was asked to determine (i) what, if anything, Qualtex was threatening to do at the date of their commencement, (ii) whether any live threat survived the service of Qualtex's defence and (iii) whether anything which Qualtex threatened to do amounted to passing off.

Floyd J held, for Numatic, that the company was entitled to quia timet relief on the basis that there was an impending passing-off.

* After summarising the criteria for succeeding in an action for passing-off, he explained that any claimant who brought a quia timet action was necessarily obliged to prove the elements of its case on a somewhat theoretical basis since they hadn't actually happened yet. Numatic thus had to show that it was justified in commencing proceedings because Qualtex was threatening to do acts which would amount to passing off.

* On the evidence, at the date of the show and until the date that proceedings were commenced, Qualtex was both threatening and intending to launch a machine with substantially the same appearance as its prototype, although that threat was removed after the defence was served.

* There was no real dispute that Numatic had a protectable goodwill and reputation in the combination of features which made up the appearance of the Henry vacuum cleaner. Given that reputation, the sale of the replica (even if it lacked the smiley face and name but retained the shape and bowler hat) would make a damaging misrepresentation.

Right: not a prototype, but Henry VIII -- better at gathering wives than dust ...

* Survey evidence from members of the public supported the view that the replica prototype conveyed a strong message that it was a genuine Henry; there was thus a real likelihood that at least some people would buy it, thinking that it was so.

* Henry was seen by the public as having the appearance of a small person, and to that extent his shape had a secondary meaning.

* One might suppose that members of the public would still recognise the product even if one or more of the elements which gave it that character were removed, so long as enough remained to convey the same message. Removing the face and name from the replica was not sufficient to avoid passing off, since not all sensible purchasers would be put on enquiry by their absence.

The IPKat believes that this is a question of winning the battle but losing the war: Qualtex will eventually be on the market with a product which is just sufficiently distant from Henry to avoid any IP infringement, but which will still be close enough for consumers to view it as a generic look-not-quite-alike product. Merpel says, now that there's a new government and we are allowed to say "quia timet", can we go back to saying nice words like 'affidavit' and 'plaintiff' again, please?

Cat and dog vacuum cleaners here

Some famous Henrys here, here and here

One infamous Henry here

Song about lots of Henrys here