European Court of Justice, Decision of 18 October 2012, Nos. C-101/11 P and C-102/11 P, "Seated Figure"

The European Court of Justice (CJEU) confirmed that the comparison of the overall impression conveyed by two opposing designs does not necessarily need to be based on their direct comparison by the informed user. In certain cases, it may be sufficient to refer to the (incomplete) recollection of the designs in the memory of the user.

José Manuel Baena Grupo, SA (Baena Grupo) is the owner of the following registered Community design for ornamentation for t-shirts, caps, stickers, printed matter, including advertising materials.

Click here to view design.

Herbert Neuman and Antoni Galdeano de Sel applied for a declaration of invalidity, claiming lack of novelty and individual character, based on the following older Community figurative trademark, registered for "clothing, games, sports and gymnastics articles".

Click here to view design.

OHIM’s Cancellation Division and Third Board of Appeal declared the Community design invalid.

The General Court annulled the Board's decision. The court said that the overall impression of the opposing designs was determined, to a large extent, by the different facial expressions of the figures. This, together with the different positions of the bodies, created a different overall impression on the informed user so that the Community design was valid.

Upon appeal, the CJEU confirmed this decision.

The CJEU commented, in particular, on the concept of the "informed user" under the Community Design Regulation. According to the court, that concept is somewhere between the average consumer, applicable in trademark matters, who does not necessarily have any specific knowledge and would not, in general, make a direct comparison between the trademarks at issue, and the sector expert with detailed technical expertise. Thus, the concept of the "informed user" does not refer to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the particular sector.

The court said that, where possible, the informed user would make a direct comparison between the opposing signs. However, if in certain cases such comparison was impracticable or uncommon in the sector concerned, a direct comparison was not obligatory. Therefore, in the case at issue, the General Court had not erred in law by basing its reasoning on the informed user’s imperfect recollection of the overall impression produced by the two opposing sign.