In PepsiCo v Grupo Promer Mon Graphic SA C-281/10 P, Advocate General Mengozzi (AG) offered his analysis of the key but nebulous concepts of “degree of freedom of the designer” and “informed user” under the Community Design Regulation (6/2002/EC) (CDR).

BACKGROUND

Grupo Promer had registered a Community design in respect of goods described as “metal plate[s] for games”, represented below.

PepsiCo applied to register the design shown below in respect of goods identified as “promotional items for games”.

Both designs related to small collectable children's toys called “pogs”. Promer applied to declare PepsiCo’s design invalid. The Cancellation Division of the Office for Harmonization in the Internal Market (OHIM) agreed. The Third Board of Appeal, however, overturned the decision on the basis that Promer’s design produced a different overall impression on the informed user. Promer appealed to the EU General Court.

The General Court overturned the Board’s decision, ruling that even though the designer’s freedom was severely restricted, the differences between the two designs were too insignificant to create a different overall impression. Further, it found that certain aspects of the design, namely the circular shape in the centre of the pog, could have been developed freely by PepsiCo.

PepsiCo appealed to the Court of Justice of the European Union (CJEU).

OPINION

Designer’s Degree of Freedom

PepsiCo claimed that the General Court had failed to take into account the constraints on the designer’s creative freedom. The AG’s interpretation was that constraints that were dictated exclusively by function, such as the fact that pogs cannot have sharp edges, were to be considered over and above standard features that the market expected but are not necessary technically, such as that pogs should have a circular central part, as PepsiCo had argued.

The Informed User

PepsiCo argued that the General Court had wrongly interpreted the notion of the “informed user” by using the view point of the “average consumer” who only compared the designs superficially. The AG confirmed that although neither the CDR nor case law defined the informed user, he considered that the General Court correctly characterised the informed user as “particularly observant”, with “has some awareness of the state of the prior art, that is to say, the previous designs relating to the product in question”.

The Comparison

The AG then turned to the question of the type of comparison that the informed user may make between the designs at issue. PepsiCo argued that the General Court’s review was too focused on the physical goods rather than the designs as registered. The AG disagreed and considered it proper “to take account of the actual goods characterised by a specific design” since the relevant public “do not usually ever see the registrations of the designs, but only their ‘practical application’, that is to say, the goods characterised by those designs”.

The type of comparison that the informed user was able to make between the designs (direct or indirect) was not to be rigidly defined. Instead it required a case by case assessment, based on the circumstances and the features of the goods to which the designs related.

COMMENT

This being the first case under the CDR to reach the CJEU, uncertainty remains around the definition of the “informed user”. Nonetheless, it can be inferred that he would appear to be more attentive than the average consumer, but not an expert. As for the designer’s degree of freedom, it will be interesting to see whether the CJEU agrees with the AG’s comments that features that are exclusively dictated by the function of the design are more important than features that the market simply expects.