On October 20, 2011, the Court of Justice of the European Union, Europe’s final authority on Community design law, rendered its long-awaited decision in
PepsiCo v OHIM – Grupo Promer (Case C-281/10 P) with the central issue being the manner in which differences or similarities between conflicting designs are established under the Community Design Regulation (“CDR”). The underlying products were small metal plates, also referred to as “rappers”, playthings inserted in product packages, and the validity of the Community design was challenged to be “in conflict with”, i.e., to infringe an earlier Spanish design.
The proceedings before the Court of Justice focused on four legal questions (a fifth question related to an alleged distortion of the facts is not part of this review), namely whether the lower instance, the General Court of the European Union, committed any errors in relation to (i) the constraints on the designer’s freedom (Article 10  CDR), (ii) the concept of the informed user and his level of attention (Article 10  CDR), (iii) the scope of the General Court’s power of review (Article 61  CDR), and (iv) whether it was possible to compare the underlying goods rather than the conflicting designs (Article 10  CDR).
(i) Starting with possible constraints limiting the degree of freedom of the designer in developing the design, the Court of Justice found that assessing such constraints would relate to findings of a factual nature made by the General Court rather than to any legal questions. In fact, PepsiCo did not challenge the facts as being distorted and neither disputed the relevance of the criteria for establishing the designer’s degree of freedom (inter alia, the constraints of the features imposed by the technical function of the product or an element thereof or by statutory requirements applicable to the product). Thus, the Court of Justice, in accordance with settled case law, held the challenge of that assessment as inadmissible.
(ii) Turning to the concept of the informed user and his level of attention, this concept, according to the Court of Justice, first “must be understood as lying somewhere between that of the average consumer, applicable in trademark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise.” Consequently and second, such concept had to 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.” Thus, the very nature of the informed user would mean that, when possible, he will make a direct comparison between the designs at issue. However, it cannot be ruled out that 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. Third and finally, as regards the informed user’s level of attention, the Court of Justice held that such user, without being a designer or a technical expert, would know “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.”
(iii) As regards the scope of the General Court’s power to review the Office’s examination of the differences and similarities between the designs at issue and its determination of whether or not there is a similar overall impression, the Court of Justice found that the in-depth examination of the designs at issue carried out by the General Court, contrary to the position also taken by the Office itself, did not go beyond its power to alter decisions under Article 61 CDR.
(iv) Lastly, and related to whether the Office or the General Court are allowed to base the assessment of the designs in conflict on a comparison of physical samples of actual products rather than only on the designs as disclosed and represented in the contested and in the earlier design registration, the Court of Justice found that such comparison was not mistaken, given that the informed user was different from the ordinary average consumer. The Court added that in the present case the physical comparison was done only to confirm the judgment already reached based on the respective registrations.
Dr. Henning Hartwig, Bardehle Pagenberg