The much-loved 'Henry' vacuum cleaner has been victorious in a passing-off claim against a replica machine.

The Facts of the Case
Numatic, the Claimant, has been producing and marketing the famous ‘Henry’ vacuum cleaner since the early 1980s.  Henry has been described as "having the appearance of rather a rotund cheeky chappy with [a] smiling face”.  The vacuum cleaner’s anthropomorphic appearance and get up have become identifiable amongst consumers; in particular the Henry name, the ‘bowler hat’ top section, the red coloured lower section, the hose attachment ‘nose’ and the smiling face.  Numatic has established the Henry character through its marketing campaigns and this persona has become much-loved in the marketplace.  The Henry range also has an excellent reputation for reliability and sales account for around 50% of the commercial cleaning market and 3-5% of the much larger domestic cleaning market.

Around 2008, Qualtex, the Defendant, commenced plans to design and manufacture a replica Henry machine.  Negotiations between the parties followed but had long since broken down by the time Qualtex prominently displayed a prototype of their machine at a trade show in Birmingham, generating significant customer interest and leading to 100 prototype machines being shipped to the UK.  Qualtex did not use any of Numatic’s registered trade marks and registered design rights in the shape of the cleaner had by then expired.  Consequently, Numatic was left with a quia timet passing-off claim as their only cause of action.  Along with the passing-off action, Numatic also issued an application for an interim injunction.

Numatic alleged that Qualtex’s prototype product, along with the product as depicted on the prototype packaging, would deceive consumers into believing that it was a Henry machine owing to the similarities between the appearance and get up.  Numatic claimed that Henry’s appearance was “iconic”, making it “probably the most distinctive vacuum cleaner on the market”.  As such, Numatic asserted that it owned valuable goodwill in the shape and get-up, in particular the ‘bowler hat’ shaped top section.

Decision
Despite stating that it is more difficult to acquire goodwill in a shape as consumers do not typically consider it to be an indication of origin, Floyd J found no difficulty in confirming that Numatic have a protectable goodwill in the various features of the Henry machine.  The resemblance to a small person gave the shape of a Henry cleaner a secondary meaning amongst consumers (which sets this case apart from many other ‘shape’ passing-off actions).  This point was conceded by Qualtex, in relation to the smiling face at least.

Qualtex intended to supply their replica machine unbranded, with stickers supplied loose in the packaging to allow commercial customers to customise the product.  In contrast, the packaging clearly featured Qualtex’s brand name for their product, Quick Clean.  Numatic claimed that the unbranded replica machine would often be presented on display, either in retail outlets or on-line out of the packaging and so a deceptive misrepresentation would occur. 

In support of this view, Numatic relied upon survey evidence in which 48% of respondents identified an image of Qualtex’s replica as being a Henry machine.  However, following the predictable criticism of the survey’s questions and methodology by Floyd J, this percentage was significantly reduced to between 16-21%.  Nevertheless, this was still sufficient for Floyd J to find that the ‘bowler hat’ top section on Qualtex’s machine prompted a strong recognition of a Henry product.

The question of whether consumers would be misled was determined by oral evidence from witnesses, taken from the respondents to the survey.  Floyd J was ultimately convinced that “there was a real likelihood that at least some members of the public would buy it thinking it was a Henry” and that this evidence confirmed Floyd J’s own impression.  The absence of one or more of the genuine Henry’s features was not held to be sufficient to distinguish a replica product from the original. 

Furthermore, the Quick Clean brand name adopted by Qualtex was deemed insufficient to distance the products from each other, partly given its descriptive/non-distinctive nature and partly because it was not well-known.  This suggests that Qualtex’s branded packaging may also have misrepresented Numatic’s goods.

As this case was effectively a quia timet action, Numatic had to prove that they would be likely to suffer damage if Qualtex made good of its threat and placed their replica Quick Clean machine on sale.  Floyd J was satisfied that Numatic would indeed be likely to suffer such financial damage, so the passing-off action succeeded.

Comment
When considering the question of misrepresentation, Floyd J commented that “features of shape alone are probably not sufficient to cause confusion provided that there is some really striking get-up to take out of the norm of what would be expected for a Henry”.  This can be interpreted as meaning that confusion and so misrepresentation will only occur with regards shape and get-up if that shape and get-up is sufficiently far removed from the norm.  This seems reminiscent of the novelty and individual character provisions of the Registered Designs Act 1949 (s.1B) which discusses, inter alia, the level of design freedom available.  Nevertheless, it is clearly possible for the shape of a product per se to be protectable under passing-off.

In the judgement, Floyd J determined that consumers would only exercise a "moderate amount of care" when purchasing a vacuum cleaner.  This seems surprising, given that it is a relatively expensive purchase of around £100.  Floyd J also stated many consumers would not know that Numatic produced the Henry cleaner, such was the prominence given to the brand name.  Therefore, a misrepresentation may still have occurred even if Qualtex displayed their name on the machine and/or packaging.  Again, it is perhaps surprising that given the cost of the cleaner, a consumer would not seek reassurances that it was a genuine Henry cleaner (i.e. originating from the same manufacturer).

As perhaps expected, the decision analyses the survey evidence relied upon by the Claimant.  The principle criticism is that the questions were leading and asked the respondents to assume that they were already in some way familiar with the product in question.  Regardless of the survey criticism, it is still interesting to note that Floyd J was persuaded by a relatively small percentage of survey respondents who were misled.

Finally, with regards to this specific case, it should be noted that Qualtex evolved the design of their cleaner after proceedings had commenced and withdrew its threat to market its original Henry replica machine.  Numatic do not contend that Qualtex’s new commercial and domestic machines amount to passing-off, so Henry may still have some cleaning up to do in the future.

Published on 5th July 2010