Court of Justice, Judgment of 20 October 2011,  C-281/10 P, PepsiCo, Inc. v. Grupo Promer Mon Graphic SA[2]

In a case concerning two designs for pogs (flat toy discs often sold as promotional items with snack foods), the Court of Justice was asked to give guidance on fundamental concepts of Community design law, such as who is the "informed user" and other criteria for the comparison of designs. The clarification hoped for, however, has not been provided, and so design owners will have to wait for the case law to develop further.

The designs at issue were the following:

Click here to view Grupo Promer's earlier registered Community design v.

Click here to view PepsiCo's Community design

The case turned on whether PepsiCo's design had "individual character". A design does not have individual character when it produces the same overall impression on the informed user as a previously disclosed design.

The Office for Harmonization in the Internal Market (OHIM)'s Board of Appeal had found the designs at issue to be sufficiently different, bearing in mind the limited freedom enjoyed by the designer, the commonplace nature of the shared features, and the different curvature of the discs. The General Court, however, saw that differently and annulled the Board's decision, essentially stating that the designs did produce the same overall impression.

PepsiCo's appeal to the CJEU concerned, inter alia, the definition of the "informed user", and the way in which the comparison between two registered designs must be carried out under EU design law.

As regards the informed user, the General Court had said that this could be a child in the age range 5 to 10 or a marketing manager in a company that uses pogs to promote its products. The CJEU held this to be correct, defining the informed user as "somewhere between" an average consumer and an expert in the field. It is therefore a "particularly observant" user of the products in question.

As regards the comparison between the designs, the General Court had based this on what was "easily perceptible", and what would be remembered by the informed user. This was reminiscent of the test applied in trade mark law, and the principle of "imperfect recollection", and the question was raised whether this was proper for design law. Furthermore, the General Court had taken into account actual product samples, rather than the design drawings as contained in the register. The CJEU, while confirming that, generally, the informed user would make a direct comparison, did not consider that this was imperative, and found that the General Court's statements as to what would be "remembered" did not mean that it had applied wrong criteria. It further held it to be correct for product samples to be taken into account, which is surprising in the context of registered designs on both sides.

Finally, the CJEU confirmed that, in matters that involve specialized expertise, the General Court "may afford OHIM some latitude", but did not take issue with the General Court replacing its own findings as to the proper impression of the informed user for those of OHIM.

On the whole, the judgment stopped short of providing the desired clarification as to who the "informed user" really is and how he will go about comparing designs. If anything, it appears to confirm a rather greater scope of protection even to relatively simple designs than what had been expected. Further case law on these issues will have to be awaited.