In Grupo Promer Mon Graphic SA v OHIM (Case T-9/07), the EU General Court found PepsiCo Inc's Community registered design for "promotional items for games" invalid and provided useful guidance in determining whether a design is “in conflict” with a prior design.

Under the Community Designs Regulation (CDR), a Community design may be declared invalid if it is in conflict with a prior design which has been made available to the public after the date of filing of the application or, if a priority is claimed, the date of priority of the Community design, and which is protected from a date prior to that date by a registered Community design or an application for such a design, or by a registered design right of an EU member state, or by an application for such a right.

In this case, PepsiCo applied to register a design for promotional "rappers” or “pogs” (small discs that are stacked up and flipped in the game of the same name, click here to see illustration).

Grupo Promer applied for a declaration of invalidity on the grounds that the design was in conflict with its own Community registered design (click here to see illustration).

The General Court held that:  

  • A Community design is in conflict with a prior design when, taking into consideration the freedom of the designer in developing the Community design, that design does not produce on the informed user a different overall impression from that produced by the prior design.
  • The informed user is neither a manufacturer nor a seller of the relevant products but in this case could be any person familiar with the phenomenon of ‘rappers’, whether a child or a marketing manager in a company that makes goods which are promoted by giving away these items.  
  • The informed user is particularly observant and has some awareness of the previous designs relating to the relevant product.  
  • The designer’s degree of freedom in developing his design is established 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. It held that in this case the designer’s freedom was severely restricted since he had to incorporate certain common features in his design for the product in question and because the items had to be inexpensive, safe for children and fit to be added to the products which they promote.  
  • Where the designer's freedom is severely restricted, it is more likely minor differences between the designs will create a different overall impression. Similarities in common features would only have minor importance in the overall impression. In this case the differences were insufficient for the PepsiCo’s design to produce a different overall impression on the informed user from that produced by the prior design.