BRISK FALL DAY—MIDDAY
In a small local pub somewhere in the middle of the Atlantic Ocean, perhaps Bermuda, the Azores or Ascension Island …
Olivia Owens: Iris, great to see you again! How’s it going in London?
Iris Underwood: Well. Good to see you too Olivia. I’m glad you agreed to join me to discuss transatlantic design infringement. I’ll be honest, I’m still not clear about your “ordinary observer.”
OO: I’m happy to explain. In the United States, the “ordinary observer” is a hypothetical person whose perspective we use to assess whether a patented design is infringed by the accused product. As the U.S. Supreme Court explained in 1871, design patent infringement is determined from “the eye of an ordinary observer, giving such attention as a purchaser usually gives.1 Infringement occurs when that ordinary observer deems that the accused design and claimed designs are substantially the same in light of the prior art.2
IU: 1871—wow, that’s quite a while ago. Is the ordinary observer a typical retail consumer?
OO: He or she may be, but it depends on the accused product. You see, the U.S. courts determine the appropriate “ordinary observer” by looking to the ordinary purchaser of the product accused of infringement.3 In many cases, it may be the typical consumer in a retail environment. But, in other cases the ordinary observer may be an industrial purchaser.4 One thing is clear, the ordinary observer is familiar with the prior art designs, which puts him or her in the proper frame of mind for assessing infringement. Do you folks over in Europe have an ordinary observer?
IU: Not exactly. The EU test focuses on the perspective of the “informed user.” In the EU, infringement of a registered or unregistered community design is found where the contested design produces the same overall impression on an “informed user.” As you might expect, an identical design will infringe. But where there are differences, infringement is assessed considering the overall impression produced by the allegedly infringing design, and whether those differences change the impression produced by the protected design through the eyes of the informed user.
OO: I’m still not clear on who is the “informed user.” It sounds like an expert.
IU: Not exactly. The “informed user” falls somewhere between an average consumer, who doesn’t necessarily have specific knowledge, and a sectoral expert, who has detailed technical expertise.5 But, the informed user is not a user of average attention, but rather a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question. Without being a designer or a technical expert, the informed user knows the various designs that exist in the relevant sector, possesses a certain degree of knowledge with regard to the features that 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.
OO: So it sounds like both the ordinary observer and the informed user are knowledgeable about the prior art designs. Does the informed user change depending on the accused product, like the ordinary observer?
IU: While the case law isn’t as clear as in the United States, it does seem so. In Apple v. Samsung, the court stated that the informed user “is a user of the product in which the design is intended to be incorporated (he or she is not a designer, a technical expert, a manufacturer or a seller).“6 In one case,7 the Court of Justice for the European Union had no problem with the informed user being a child between the ages of 5 and 10!
OO: In the United States, the court decides the scope of the design by considering the design patent’s figures (what’s in solid or broken lines) and prosecution history (the back and forth with the patent examiner before the patent was issued). The court also considers which features of the claimed design are “ornamental” and which are “purely functional.“8 For functional elements, the claim is limited to the ornamental aspects, as depicted in the figures.9 This analysis is done by the court and does not involve the ordinary observer. How does the informed user know the scope of the design?
IU:The scope of protection for a community design extends to any design that does not produce on the informed user a different overall impression.10 But, when considering the scope of protection, we must also consider the “degree of freedom” available to the designer in developing their design.
OO: “Degree of freedom”? Sounds exotic. Tell me more!
IU: The greater the design freedom available to the designer, the more likely it is that similarities between the designs will attract the attention of the informed user and may lead to the conclusion of infringement. On the other hand, the greater the restrictions on the design freedom, then the more likely it is that differences will be regarded as sufficient to lead the informed user to find that the overall impressions produced by the respective designs differ, leading to a finding of noninfringement.11 In a 2007 case before the U.K. Court of Appeal12, where the designer had a limited degree of freedom, the appearance of a can of air freshener was found not to infringe the EU registered design:
RCD No. 000097969-0001 Accused Product
Conversely, in another U.K. case,13 where a wide degree of design freedom was available, the appearance of a chill bag was found to infringe an ice bag design:
RCD No. 000616057-0001 Accused Product
What role does the ordinary observer play in the infringement analysis?
OO: Under the ordinary observer test in the United States, the ordinary observer plays a key role in a three-way comparison of how the most relevant prior art, the claimed design, and the accused product are compared.14 Here’s one comparison from a 2011 case,15 involving a bench end frame, where the court found infringement:
Prior Art U.S. Design Patent No. 523,263 Accused Product
Here’s an example of a case16 where the court found no infringement:
Prior Art U.S. Design Patent No. 348,585 Accused Product
These examples show that this comparison is important because it can be difficult to answer the question of similarity without being given a frame of reference. Where the frame of reference consists of numerous similar prior art designs, those designs can highlight the distinctions between the claimed design and the accused design as viewed by the ordinary observer.17
IU: Interesting. Does the ordinary observer have a role in the invalidity analysis?
OO: Actually, no. Under U.S. law, the invalidity analysis is from the point of view of the “designer of ordinary skill.” This person is usually considered to be more of an expert in the design of the articles at issue than the ordinary observer. What about in Europe?
IU: In the EU, the informed user does play some part in the invalidity analysis. To be valid (and thus enforceable), a design must be both novel and have individual character. The design is considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design that has already been made available to the public. This is the same informed user who considers the scope of protection of the design right.
OO: Well Iris, it sounds like my ordinary observer and your informed user have a lot in common. Maybe we should get them together for a chat sometime, eh?
IU: Yes, Olivia, I’m sure they’ve seen a lot over the years and would have fun swapping war stories! FADE TO BLACK THE END
Endnotes 1 Gorham v. White, 81 U.S. 511, 528 (1871).
2 Egyptian Goddess Inc. v. Swisa, Inc., 543 F.3d 665, 677 (Fed. Cir. 2008).
3 Goodyear Tire, 162 F.3d 1113, 1117 (Fed. Cir. 1998) (finding the ordinary observer to be the trucker or fleet operator).
4 See also Arminak v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1323 (Fed. Cir. 2007) (affirming an industrial purchaser or contract buyer as the ordinary observer for spray shrouds).
5 PepsiCo, Inc v. Grupo Promer Mon Graphic SA, C-281/10 P.
6 Apple v. Samsung judgment and para 64 of the CJEU decision.
7 PepsiCo, Inc v. Grupo Promer Mon Graphic SA, C-281/10 P, paragraph 61, 64.
8 Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1333 (Fed. Cir. 2015).
11 Arrmet, S.R.L.’s Design  E.C.D.R. 24 (OHIM) at .
12 Proctor & Gamble Company v. Reckitt Benckiser (UK) Ltd ( EWCA Civ 936).
13 Gimex Internationale Groupe Import Export v. The Chill Bag Co & others  EWPCC 31.
14 Egyptian Goddess, 543 F.3d at 677.
15 Victor Stanley, Inc. v. Creative Pipe, Inc., No. 06-2662 (D.Md. Sept. 30, 2011).
16 Wing Shing Prods. v. Sunbeam Prods., 665 F.Supp.2d 357 (S.D.N.Y. 2009).
17 Egyptian Goddess, 543 F.3d at 676-77.