In a much anticipated decision delivered in October, the Court of Justice of the European Union (CJEU) has provided its first judgment concerning the Community Design Regulation of 2002. The decision in Grupo Promer Mon Graphic SA v OHIM, PepsiCo Inc deals, in particular, with who is the “informed user” and how to calculate the same “overall impression”. Whilst the case was an invalidity action, this guidance is equally applicable to infringement actions concerning Community designs as the test is in essence the same.
The case concerned Pepsi’s Community design registration for game items called “pogs” or “tazos”. The Pepsi design had a priority date of 23 July 2003 and is reproduced in the judgment as follows:
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Grupo Promer filed an application for invalidity based on its previous Community design application in respect of which priority is claimed for an earlier Spanish design. There were four invalidity grounds but the main one in contention before the CJEU was under Article 25(1)(d) of the Regulation, i.e. the Pepsi registration conflicted with Grupo Promer’s earlier design registration. The Grupo Promer registration had a priority date of 8 July 2003, i.e. two weeks earlier than the Pepsi application, and is reproduced in the judgment as follows:
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Both parties had various degrees of success along the way with OHIM’s Invalidity Division granting a declaration of invalidity, the Board of Appeal reversing that decision and the General Court then reversing the Board of Appeal decision holding that the differences between the designs did not produce a different overall impression on the informed user and so the Pepsi design was invalid. This was the position from which the CJEU heard the appeal.
Pepsi’s ground of appeal under Article 25(1)(d) of the Regulation was broken down into a number of elements. The most important of note was the concept of the informed user and his or her level of attention and the comparison to be made. There were other aspects of the appeal in which Pepsi remained unsuccessful but they are not dealt with here.
The informed user
The Regulation does not define who constitutes the “informed user”. However, the CJEU held that the concept:
“must be understood as lying somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise. Thus, the concept of the informed user may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question.”
And so the informed user is neither the average consumer used in trade mark comparisons nor the person skilled in the art as used in patent matters but some notional person in between the two. Although, based on the CJEU’s requirement for a certain level of de minimis familiarity with the sector concerned, the informed user is probably slightly skewed towards the patent side of the spectrum. Having said that, the informed user, as a notional person, has no equivalent in other areas of intellectual property law.
Moreover, it is possible for the informed user to be more than one person, in the Pepsi Case the CJEU approved of the earlier characterisation of the informed user in the case being either 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 level of attention
Regarding the level of attention that the informed user would exercise, the CJEU held that:
“the concept of the informed user may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question.”
This again removes the informed user away from the trade mark sphere in that a comparison is certainly not made be a “moron in a hurry”. In addition, the CJEU held that:
“the qualifier ‘informed’ suggests that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them.”
The comparison to be made
On the issue of the comparison to be made, the CJEU held that the EU legislature did not intend to limit the assessment of potential designs to a direct comparison by the informed user. Whilst the CJEU considered this to be presumed in most cases, it did countenance circumstances where such a comparison may be impracticable or uncommon in the relevant sector concerned, in particular because of the specific circumstances or characteristics of the designs.
The CJEU’s findings are consistent with the decision of Jacob LJ in the leading UK Court of Appeal decision concerning Community designs, The Procter & Gamble Company –v- Reckitt Benckiser (UK) Limited, where it was held that the informed user does not carry an “imperfect recollection” test. According to the UK Court of Appeal, what matters when assessing the overall impression of a design is what strikes the informed user’s mind when the design is carefully viewed and that the informed user is alert to design issues which means that things that may infringe a registered trade mark may not infringe a corresponding registered design. As a result, the CJEU’s decision in the Pepsi Case does not appear to change the law rather confirm the jurisprudence that has developed in the UK and Ireland previously.
In addition, the CJEU decision in the Pepsi Case is a welcome development in time for the yet to be announced Irish Supreme Court hearing in Karen Millen v Dunnes Stores, an appeal from a Community unregistered design decision from 2007 dealing with the fashion industry. In the High Court decision, it was held that the informed user was “a woman with a keen sense of fashion, a good knowledge of designs of women's tops and shirts previously available to the public, alert to design and with a basic understanding of any functional or technical limitations on designs for women's tops and shirts”. Matheson Ormsby Prentice acts for Dunnes Stores in that case.