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First General Court decision on Community designs law
- Brief Overview
- Grupo Promer is the first EU court decision to discuss in detail the meaning of several key aspects of Community designs legislation, such as who is the "informed user" and what is the "same overall impression".
- Applicable Law
- European Union
- Reviewed
- 18 March 2010
- Submitted
- 18 March 2010
The introduction of EU wide registered and unregistered design law in 2002 has had a significant impact on the protection of innovative designs in the EU. After a series of conflicting decisions from Community Design Courts in Member States (particularly the various decisions in the dispute between Procter & Gamble and Reckitt Benckiser in relation to the AIRWICK Odour Stop sprayer), the General Court has handed down its first decision on Community design law1.
Background
In early 2003, Spanish manufacturer Grupo Promer Mon-Graphic SA (Promer) pitched its tazos to Frito Lay, a PepsiCo subsidiary. Tazos, also called rappers or pogs, are small promotional toys, often included with food products aimed at children. The pitch was confidential.
On 04 February 2004, PepsiCo applied to register the design below for "promotional item[s] for games":
Promer's earlier RCD filing for "metal plate[s] for games" was:
Promer applied for invalidity, arguing:
- that PepsiCo's design lacked novelty and individual character (Article 25(1)(b)) because of Promer's earlier RCD filing for "metal plate[s] for games" and
- that PepsiCo's design was "in conflict" with Promer's prior design (Article 25(1)(d)).
The Invalidity Division invalidated PepsiCo's RCD on the basis that it was "in conflict" with the prior design but Promer's other argument failed. Because Promer's earlier RCD had not been published at the time of PepsiCo's RCD application, it could not be taken into account as a prior design for the purposes of Article 25(1)(b). Neither could the confidential disclosure to Frito Lay.
PepsiCo appealed. The Board of Appeal primarily addressed the issue of whether PepsiCo's RCD was in conflict with Promer's earlier design and reversed the Invalidity Division on the facts. To the Board, the design freedom of a designer of tazos is extremely limited - therefore the minor differences in PepsiCo's design were enough to create a different overall impression on the informed user. Promer also alleged that PepsiCo's application was made in bad faith - the Board had no hesitation in finding that bad faith is not a ground of invalidity.
General Court
The General Court, in a closely argued decision, has affirmed the Board on several points, but overturned the overall finding in relation to invalidity.
Bad faith
In relation to bad faith, the General Court confirmed that bad faith is not a ground for invalidity of an RCD - the list of grounds of invalidity in Article 25(1) is exhaustive.
In conflict
The General Court also confirmed the position taken by both the Invalidity Division and the Board of Appeal on Article 25(1)(d) invalidity - where a design is "in conflict" with a prior design. This should be interpreted as referring to a design which does not create a different overall impression on the informed user when the degree of design freedom of the designer in developing the Community design is taken into account. If this were not the case, the proprietor of a design would be prevented from applying for invalidity of a later application which falls within the scope of protection of the earlier design.
Product
The category of goods protected by the design is an important consideration when assessing validity. The Invalidity Division held that the design freedom of a designer of "promotional item[s] for games" is broad and invalidated the RCD. The Board of Appeal held that the design freedom of a designer of tazos is narrow and dismissed the invalidity application. The General Court held that whilst the indication of the product to which the design is to be applied, as indicated in the RCD application, should be taken into account, it was not determinative. Instead, the tribunal needs also to look to the design itself, in so far as it makes clear the nature of the product, its intended purpose or its function. Following that approach, the General Court affirmed the Board's finding that the relevant product in this case was tazos, not the broader category of "promotional items".
Informed user
Who the informed user is will often determine the validity of a design. The different approaches to determining the informed user adopted across the EU have therefore been unhelpful to practitioners and designers.
The General Court has set out a helpful definition of the informed user:
"It must be found that the informed user is neither a manufacturer nor a seller of the products in which the designs at issue are intended to be incorporated or to which they are intended to be applied. The informed user is particularly observant and has some awareness of the state of the prior art, that is to say the previous designs relating to the product in question that had been disclosed on the date of filing of the contested design, or, as the case may be, on the date of priority claimed."
Unfortunately, the General Court went on to give personality to this legal fiction, stating that the informed user of tazos could be a child or a marketing manager - but it didn't matter.
Degree of freedom
The General Court provided a useful guidance on how to assess design freedom:
"the designer's degree of freedom in developing his design is established, inter alia, by the constraints of the features imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to the product. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned."
The court therefore upheld the Board's finding that the design freedom of a tazo designer is very restricted.
Overall impression
The General Court went on to assess the overall impression created on the informed user by the two designs. It did this by first listing the differences and then listing the similarities. In relation to the similarities, it assessed whether these were areas where the designer had design freedom, holding that, largely, they were. The differences, it held, would not be perceived by the informed user. In light of the similarities, the differences were insufficient to create a different overall impression on the informed user.
The court annulled the Board's decision, and awarded Promer its costs before the Board and the General Court, to be paid by PepsiCo and OHIM.
Comment
The General Court's decision is to be welcomed. It has provided clarity, although not a great deal of detail, on the meanings of several neologisms in the legislation - particularly helping to elaborate on "in conflict", "informed user" and "overall impression". Its approach to these terms is sensible and concise and, unlike the approach of the Court of Appeal of England & Wales for example, it does not add further layers of unnecessary complexity. Several paragraphs of the decision will provide clear guidance to the Invalidity Division and Community Design Courts.
Of some concern are the ongoing attempts to give the "informed user" legal personality. This was initially avoided by the Invalidity Division but adopted by the Board of Appeal. Courts in Member States have also largely avoided it, with the Irish High Court finding that evidence from someone who falls within the category of the informed user to be neither necessary or helpful. The informed user is a legal fiction, like the reasonably informed consumer. Nothing is to be gained by trying to say it is a five year old child or a marketing manager. The attributes of the informed user have been helpfully set out by the court - nothing more is required.
Whilst the court did not make any comments in relation to PepsiCo's alleged bad faith, it seems unfortunate as a question of fact (if true) that an entity to whom a design is sent in confidence can lawfully then register the design. If the designer has not previously disclosed or registered the design, he or she will have no recourse. This suggests, as a question of commercial ethics, that the legislation may require amendment. In the meantime, designers should ensure that they file their designs for registration, or disclose them in the EU, prior to sending confidential pitches to third parties.
1. Grupo Promer Mon Graphic SA v Office for Harmonisation in the Internal Market, PepsiCo Inc (Case T-9/07)
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This document is provided for information purposes only and does not constitute legal advice. Professional legal advice should be obtained before taking or refraining from any action as a result of the contents of this document.