On 20 October 2011, the Court of Justice rendered their first decision on a registered Community design. The decision is important as it illustrates how essential concepts should be understood.
The designs in question are playthings, namely small plates called ”rappers”. Grupo Promer is the owner of a Spanish design filed on 8 July 2003 and a subsequent Community design for a “metal plate(s) for games”. On 9 September 2003, PepsiCo filed an application for registration of a Community design with priority dating back to 23 July 2003. PepsiCo’s design was filed for “promotional item(s) for games”. Both designs were illustrated by representations.
As Grupo Promer’s design predated PepsiCo’s design, Grupo Promer filed a declaration of invalidity against Pepsico’s design. This request was based on lack of novelty and individual character and Grupo Promer’s prior rights.
OHIM’s Invalidity Division declared PepsiCo’s design no. 0000744463-0001 invalid but the decision was appealed to OHIM’s Board of Appeal who declared PepsiCo’s design valid again. This decision was appealed and EU General Court declared PepsiCo’s design invalid again. Again the decision was appealed and the Court of Justice upheld the decision and declared PepsiCo’s design invalid.
The design legislation operates with important concepts without providing much help to the understanding of these. During the procedure mentioned, the understanding of some essential concepts was discussed and thus the decision is important case law.
One of the most important concepts when talking design infringements is the so-called “informed user” In short, if one design provides an informed user with a different overall impression than a prior design, then the designs differ sufficiently and there is no infringement. The question in the present case was whether PepsiCo’s design provided the informed user with a different design than the prior one. According to the Court of Justice, an informed user is a person being somewhere between an average consumer without any specific knowledge who does not compare the trademarks in conflict and a sectoral expert with detailed technical expertise.
The question whether a direct comparison is to be made by the informed user is interesting because the Court of Justice states that such a direct comparison may actually take place depending on the specific circumstances. This means that sometimes this may happen and sometimes not, based on the specific circumstances. When discussing trademark infringements, this is interesting as an argument often is that the buyers targeted do not compare the trademarks directly, but must rely on an imperfect recollection of them. It then remains to be seen whether the design argument that designs are also sometimes compared directly and sometimes not, based on the specific circumstances, will also be seen more often in trademark conflicts in the future.
In the present design decision, also the level of attention of the informed user was discussed and the Court of Justice stated that the level of attention is relatively high. The reason for this is the definition of the informed user. In trademark matters, this very much depends on the goods and the buyers targeted. The question is whether the goods for which a design is intended and the classification of the design, may also in this way have some influence on the definition of the so-called informed user. What if the design illustrates a car and the classification is a toy and a second design is a design for a real car? Who is the average consumer then or does the classification have any influence at all in a conflict? This will be exciting to see in future decisions.
Finally the decision illustrates that the representation of the design is very important. In the present case samples of the goods were compared and the Court of Justice stated that they have only been used for illustrative purposes to confirm the conclusion already drawn. Based on this, it must be underlined that the representations of a design are still extremely important and that very high attention should be paid to the representations before filing a design application.
Henriette Vængesgaard Rasch, Attorney at Law
