A small metal disc could not be registered as a Community design because a more than averagely observant consumer would not see the metal disc as having individual character.
Companies can have the shape of their products registered as a Community design if the design has what is known as individual character. In the test of individual character, regard must be had to how an informed user would see the matter. The EU Court has now considered the issue of what an ‘informed user’ means, ruling that a metal disc could not be registered.
In 2005, a large US soft drinks manufacturer registered a metal disc for games as a Community design. The small brightly printed metal discs can be used to play various games and became popular in the 1990s under several names, including POG.
After a short while, a Spanish company complained about the registration, claiming that the American design was not sufficiently distinctive from the metal disc for games which the Spanish company had sought to register. And the Spanish company had been the first to apply.
How informed is an informed user?
The designs of the two metal discs differed on a couple of points. First of all, the American metal disc had two additional concentric circles on its surface. Secondly, the American metal disc was curved, whereas the Spanish disc was completely flat. The central question was therefore how an informed user would see these differences.
But first, the EU Court had to address the question of who an informed user is. The Court concluded that the informed user is a user who is particularly observant. In the case at hand, the informed user could be a 5 to 10-year-old child who frequently plays with metal discs of this kind. But it could also be a marketing manager of a company which uses the metal discs to promote its products. The EU Court also said that the informed user would, when possible, make a direct comparison between the two designs.
Accordingly, the EU Court agreed with the General Court, which had already held – based on a similar definition of the ‘informed user’ – that the American metal disc was not sufficiently distinctive from the Spanish one. On those grounds, the registration of the American design was cancelled and removed from the register.
Norrbom Vinding notes:
- that, with this judgment, the EU Court has clarified that the consumer concept of EU trademark law where the likelihood of confusion between two trademarks is to be assessed by the average user/consumer does not apply in EU design law; and
- that this is the first judgment from the EU Court which interprets the provisions of the EU Design Regulation.