The first substantive designs decision from the Court of Justice of the European Union (ECJ) has provided a clear description of who the ‘informed user’ is and clarified whether or not imperfect recollection can play a role in design law.

PepsiCo Inc v Grupo Promer Mon Graphic SA(Case C-281/10 P) centres on two designs related to small collectable children's toys. Grupo Promer Mon Graphic SA had registered a Community design in respect of goods described as “metal plate[s] for games”. PepsiCo Inc subsequently applied to register a design in respect of goods identified as “promotional items for games”. Promer applied for a declaration that PepsiCo’s design was invalid, which the Cancellation Division of the Office for Harmonisation in the Internal Market granted. The Third Board of Appeal, however, overturned the decision, stating that Promer’s design produced a different overall impression on the informed user. This was then appealed to the General Court, which overturned the board’s decision. It ruled 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. It added that certain aspects of the design could have been developed freely by PepsiCo (for further details please see "First General Court judgment on Community designs issued").

PepsiCo appealed to the ECJ, claiming that the General Court did not consider the constraints on the designer’s creative freedom and had wrongly interpreted the notion of 'informed user' by using the viewpoint of the 'average consumer', who compared the designs only superficially.

Today the ECJ handed down its decision, rejecting PepsiCo’s appeal. On the concept of the ‘informed user’ and his level of attention, the ECJ stated:

“… that concept 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 trademarks in conflict, and the sectoral expert, who is an expert with detailed technical expertise. Thus, 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...”

“… As regards the informed user’s level of attention, it should be noted that, although the informed user is not the well-informed and reasonably observant and circumspect average consumer who normally perceives a design as a whole and does not proceed to analyse its various details… he is also not an expert or specialist capable of observing in detail the minimal differences that may exist between the designs in conflict. Thus, the qualifier ‘informed’ suggests 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.”

David Stone, partner of Simmons and Simmons and chair of the MARQUES Designs Team, welcomed the decision, telling WTR: “We have been given a clear and helpful description of who the informed user is. This is not an expert or specialist, but they do know certain things. This is the important thing about the legal fiction – not that it is, say, a ‘48-year-old man seeking to cut his grass’, but rather to say what the informed user knows - that he possesses a certain degree of knowledge as to the features those types of design usually include and shows a relatively high degree of attention when using them.”

Turning to the assessment of the overall impression, PepsiCo argued that the General Court had based its assessment on an examination on PepsiCo’s physical products, rather than the design drawings in the registered Community design. The ECJ disagreed, stating: “The General Court did base its assessments on the designs in conflict as described and reproduced in the respective applications for registration, with the result that the comparison of the actual goods was used only for illustrative purposes in order to confirm the conclusions already drawn and cannot be regarded as forming the basis of the statement of reasons given in the judgment under appeal."

Stone comments: “The court confirmed that you look at the designs first and foremost, but you can also look at an actual object made to design in order to confirm your opinion. The key issue there is always going to be whether the object was made strictly according to the design?’. In many cases it may differ from the design as filed - it will have branding on it or be a slightly different shape. I think this is where the argument is going to be, rather than whether you are entitled to look at a product at all.”

The one aspect of the decision Stone expresses disappointment in relates to the question of designer freedom: “We all know that design freedom includes restrictions on things like product codes and health and safety, and anything to do with technical effect, but the advocate general had also posed the question of design freedom with regard to consumer expectations, and whether the designer’s freedom can be restricted by features which the market expects the product to have. Rather than embrace this, the ECJ dodged the question – which it is entitled to do, but it would have been helpful to have an answer to that question.”

He concludes: “It’s a sensible, unsurprising decision, and is helpful in laying out a clear test of informed user and whether or not imperfect recollection can play a role in design law. The ECJ leaves this open in circumstances where it is impractical, or uncommon in the sector, to compare the designs side by side.”

MARQUES will be presenting a summary and discussion of the decision, led by Stone, at MAQS Law Firm’s offices in Copenhagen next week. For full details, click here.