ECJ Guidance on Scope of Protection of Registered Community Designs

On 20 October 2011, the Court of Justice of the EU (“ECJ”) gave judgment for the first time on the interpretation of the scope of protection of registered Community designs under Regulation 6/2002 of 12 December 2001 on Community Designs (the “Community Design Regulation”).

The Community Design Regulation offers protection against any design which does not produce on the informed user a different overall impression. In assessing the scope of protection, the degree of freedom of the designer in developing his design must be taken into consideration. Pursuant to Article 25(1)(d) of the Community Design Regulation, a Community design may be declared invalid if it is in conflict with a prior design.

On 9 September 2003, PepsiCo Inc. (“PepsiCo”) had filed an application for registration of a Community design at the Office for Harmonisation in the Internal Market (“OHIM”) for the shape of a “rapper”. “Rappers” are promotional items intended for young children and consist of a small, flat or slightly curved disc made of plastic or metal on which colour images can be printed. They are generally used to promote biscuits or potato snacks. PepsiCo’s Community design was registered for “promotional item[s] for games”.

In February 2004, Grupo Promer Mon Graphic SA (“Grupo”), a Spanish marketing and promotion company, filed an application for a declaration of invalidity against PepsiCo’s Community design. In support of its application, Grupo relied on the existence of a prior Community design, filed on 17 July 2003, for “metal plate[s] for games”. In addition, Grupo invoked Article 25(1)(b) of the Community Design Regulation as a ground for a declaration of invalidity claiming that PepsiCo’s Community design lacked novelty and individual character.

At first instance, the Invalidity Division of OHIM declared that the contested design was invalid due to the existence of a prior design right. However, upon appeal, the Third Board of Appeal of OHIM (the “Board of Appeal”) annulled the Invalidity Division’s decision and dismissed the application for a declaration of invalidity, holding that the goods covered by the designs at issue concerned a particular category of promotional items, namely “rappers” or “tazos” (the Spanish name for “rappers”), and that, therefore, the freedom of the designer of those promotional items was severely restricted. Taking into account this restriction, the Board of Appeal held that the difference in the profile of the designs at issue was sufficient to conclude that they produced a different overall impression on the informed user. Grupo appealed against the Board of Appeal’s decision before the General Court (“GC”). The GC held that the Board of Appeal had erred in finding that the two designs produce a different overall impression on the informed user. The GC considered that some of the similarities between the two designs were not the result of a restriction of the designer’s freedom (See, Van Bael & Bellis on Belgian Business Law Newsletter, Volume 2010, No. 3, p. 8, available at www.vbb.com)

The case was further appealed to the ECJ. The ECJ appeal only relates to the GC’s interpretation of the law. The ECJ is not allowed to interpret the facts of the case. As a result, PepsiCo’s argument that the GC erred in its assessment of the constraints on the designer’s freedom was declared inadmissible by the ECJ. Indeed, the ECJ held that this argument seeks to call into question findings of a factual nature made by the GC.

PepsiCo then argued that the GC applied incorrect criteria when denying that the designs at issue conveyed a different overall impression on the “informed user”. The ECJ clarified that the “informed user” is somewhere between the concept used in trade mark matters, the “average consumer” who does not need to have specific knowledge of the products at hand, and the sectoral expert, who is an expert with detailed technical expertise. Hence, the “informed user” is not a user of average attention, but a particularly observant user because of his personal experience with the goods or his extensive knowledge of the sector in question. In the case at hand, the ECJ held that the GC correctly identified the “informed user” as “a child in the approximate age range of 5 to 10 or a marketing manager in a company that makes goods which are promoted by giving away ‘pogs’, ‘rappers’ or ‘tazos’.”

The ECJ furthermore held that this “informed user”, when possible, will make a direct comparison between the designs at issue. This is again different from trade mark law, where the court usually takes into account the imperfect recollection of the sign by the “average user” who generally does not make a direct comparison between two signs.

As regards the level of attention that an “informed user” pays to the design, the ECJ maintained that the relevant user knows the various designs which exist in the sector concerned and possesses a certain degree of knowledge with regard to the features which those designs normally present. As a result of his interest in the products concerned, he shows a relatively high degree of attention when he uses them. However, the level of attention that the “informed user” pays to the differences between two designs is below the level of attention of an “expert or specialist capable of observing in detail the minimal differences that may exist between the designs in conflict”.

Finally, PepsiCo submitted that the GC is mistaken to base the assessment of the designs in conflict on a comparison of samples of the actual products. Instead, it states that the court should only look at the designs as they are registered.

The ECJ upheld the decision of the GC declaring that it is not wrong to take account of the actual products in the assessment of the overall impression of the designs at issue.

Design rights become increasingly important in the protection of products. The judgment in this case provides welcome guidance on the scope of protection of these rights.