First General Court judgment on Community designs issued

European Union
In Grupo Promer Mon Graphic SA v Office for Harmonization in the Internal Market (OHIM) (Case T-9/07, March 18 2010), the General Court has delivered its first decision on Community design law.
 
On September 9 2003 PepsiCo Inc (New York, United States) filed an application with OHIM for the registration of a Community design for "promotional items for games". The design was registered under Number 74463-0001.

In February 2004 Grupo Promer Mon Graphic SA (Sabadell, Spain) filed an application for a declaration of invalidity of PepsiCo’s design. The application was based on Community design Number 53186-0001 (filed on July 8 2003 and published on November 1 2003), which is registered for "metal plate[s] for games". Promer alleged:
  • a lack of novelty and individual character of the new design; and
  • the existence of a prior right.
On June 20 2005 the Invalidity Division of OHIM declared that PepsiCo’s design was invalid due to the existence of a conflict with Promer’s prior design. PepsiCo appealed.
 
In October 2006 the Board of Appeal of OHIM annulled the decision of the Invalidity Division on the grounds that PepsiCo’s design did not conflict with Promer's prior design. In particular, the board held that the goods covered by the designs fell within a particular category of promotional items, namely ‘tazos’ or ‘rappers’ (flat, round disks with a raised central part which produces a noise when pressed). Therefore, the freedom of the designers of those promotional items was severely restricted. The board thus concluded that the difference in the profile of the designs was sufficient to produce a distinct overall impression on the informed user. Promer appealed to the General Court. 
 
The court first clarified the concept of ‘conflict’ between two designs under Article 25(d) of the Council Regulation on Community Designs (6/2002): such conflict occurs when the designs produce the same overall impression on the informed user. In this connection, the designer’s freedom in developing the design must be considered.   
 
The court further held that, in order to determine the nature of the product in which a design is intended to be incorporated (Article 36 of the regulation), the indication specified in the application for registration of that design should be taken into account. If such indication is absent or insufficient, the design itself should be taken into consideration (particularly its function and intended purpose).
 
Moreover, the court held that the ‘informed user’ (Article 10 of the regulation) is aware of the state of the prior art - namely, the previous designs relating to the product in question that have been disclosed on the date of filing of the contested design, or on the date of priority claimed. In the present case, the informed users were either:
  • children aged between five and 10; or
  • professionals, such as marketing managers in companies producing goods which are promoted by giving away ‘rappers’ or ‘tazos’.   
Referring to Article 9 of the Community Design Directive (98/71), the court also stated that the degree of a designer’s freedom in developing a design is limited by the constraints of the features imposed by the technical functions of the product. In turn, these constraints lead to the standardization of certain characteristics, which will thus be common to the designs applied to the product concerned.
 
Finally, the court considered the overall impression produced by the designs at issue on the informed user. Taking into account the similarities and differences between the designs, as well as the degree of the designer's freedom in developing the contested design, the court found that the differences between the designs were too subtle to produce a different overall impression of the informed user.
 
On these grounds, the court annulled the decision of the Board of Appeal.
 
Barbara Krystkowiak, Grau & Angulo, Barcelona

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