Grupo Promer Mon Graphic SA v OHIM, PepsiCo Inc. (C-281/10)
In one of its first rulings on substantive Community design law the Court of Justice of the European Union (CJEU) provides guidance on some of the key issues surrounding Registered Community Designs.
The game of 'Pogs' was a schoolyard craze of the late 1990s, where players attempted to 'flip' small stacked towers of brightly decorated discs (called 'pogs', 'tazos' or 'rappers') by hitting them with another heavier disc.
A long-running dispute between Grupo Promer Mon Graphic and PepsiCo concerning design rights in their pogs has given the CJEU the opportunity to provide guidance on the characteristics and attentiveness of the hypothetical informed user within the meaning of Regulation 06/2002 on Community Designs.
In February 2003, Grupo contacted PepsiCo requesting an "opportunity to work in partnership" and provided PepsiCo with the confidential Grupo pog design as part of the negotiations. The discussions seemingly broke down and Grupo applied to register its design for 'metal plates for games' with the Office for Harmonisation in the Internal Market (OHIM) on 23 July 2003. Before OHIM could publish the Grupo design, PepsiCo applied to register its own community design for 'promotional items for games' on 9 September 2003.
Grupo applied for a declaration that the PepsiCo design was invalid. Following a successful appeal to the General Court by Grupo in March 2010, which found the PepsiCo design invalid, PepsiCo appealed to the CJEU.
A design is registrable under the Regulation if it is new and has individual character (Article 4). This depends on whether the overall impression a design has on the informed user differs from the overall impression produced on the same user by a prior design (Article 6). Article 25 sets out the grounds of invalidity for a Community design.
The CJEU considered two important issues in relation to the informed user which the Regulation fails to provide guidance on.
The characteristics of the informed user and his attention level
Firstly, what characteristics should the informed user be imbued with? Applying the reasoning of the Advocate General, the CJEU held that the informed user was not the same as the average consumer of trade mark law, nor were they the sectoral or design expert to whom any small differences between the designs would be more apparent. Instead, the Regulation required courts to adopt an 'intermediate formulation' of the informed user who fell somewhere between the two. The CJEU held:
"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".
The hypothetical informed user can therefore encompass a wide range of actual users of the design, because the main requirement appears to be their familiarity with the products. In this case, both children in the age range of five to ten, as well as marketing managers of products promoted by pogs, were held to be examples of the informed user.
Secondly, what the level of attention would an informed user pay to the designs? The court held 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 by the informed user
PepsiCo submitted that, when considering the two designs at issue, the informed user should only be conducting a direct comparison by viewing the goods side by side. The CJEU held that this would often be the case, but it also recognised that there would be certain instances where:
"such a comparison may be impracticable or uncommon in the sector concerned, in particular because of specific circumstances or the characteristics of the devices which the designs at issue represent."
In the present case however, due to the characteristics of the products themselves, the informed user would be perfectly capable of comparing the two designs side by side.
This case has provided the CJEU with the opportunity to clarify the approach which should be taken to cases of design infringement.
The definition of the informed user as any particularly observant individual who is familiar with the products through personal experience or knowledge gained from working in the sector should prove workable for OHIM to apply.
As shown in the present case, it allows the hypothetical user to embody more than one actual user of the product, including users as different as children and marketing managers. The decision also means the Community Courts have adopted the same view of the informed user as the Court of Appeal did in Proctor & Gamble v Reckitt Benckiser  EWCA Civ 936. Click here for an expert analysis of that decision.
Further, while the point was not pleaded before the CJEU, the General Court's earlier decision in this case, that a design could not be declared invalid on the basis of bad faith under article 25 of the Regulation, is also important. The General Court held that "the alleged bad faith of the intervener is irrelevant" since article 25 of the Regulation provides a list of all the grounds on which a Community Design may be declared invalid. As the Board of Appeal (with which the General Court was in agreement on this point only) put it:
"The question is not whether one design has been copied from the other, but whether they produce the same overall impression".
Designers who regularly share their designs with others in the course of commercial negotiations would therefore be prudent to protect those designs by registration rather relying on contractual confidentiality clauses or unregistered design rights. They otherwise risk the possibility of having their own design registered by another in bad faith, with little scope to have it declared invalid under the Regulation.