First Judgment Regarding European Design Law: Focus on Freedom of the Designer
European Court of First Instance, 18 March 2010, case no.
T-9/07, www.curia.europa.eu
Community
Design
Since 2003, the Community Design, a European design right which
enables the applicant to obtain protection in all Member States in
one go, is in effect. The subject of this protection is the
appearance of a two-dimensional (drawing) or a three-dimensional
(industrial design) item. Just as the Community Trademark, the
pan-European protection for trademarks in effect since 1996, the
Community Design is very successful: since its introduction in 2003
the Trademarks and Designs Registration Office of the European
Union, the Office for Harmonisation in the Internal Market
('OHIM'), has carried out approximately 400,000 design
registrations. In brief, a design registration protects the
rightholder against 'imitation' of the design.
Now, for the first time since the introduction of the European
design protection, the European Court of First Instance has
rendered a judgment on this issue, and as a result has given more
substance to a number of definitions in the Community Design
Regulation ('CDR'). The case was the following.
Design
application for 'Rappers'
PepsiCo, the internationally well known producer of soft drinks,
applied for a design on 23 July 2003, for 'promotional item[s] for
games'. The design concerned a so-called 'tazo' (Spanish) or
'rapper' (English), a kind of pog that is added to the packaging of
chips in particular. The application was registered on 16 November
2003. Next, the Spanish company Grupo Promer Mon Graphic filed an
objection against Pepsi's registration, and claimed with OHIM that
the application was invalid. Grupo Promer based this claim on its
own design filing of 8 July 2003, registered on 1 November 2003,
for a 'metal plate for games' - also a rapper. According to Grupo
Promer, Pepsi's design lacked the novelty required for a design
registration and, furthermore, Grupo Promer's design was a prior
one. In the first instance, the OHIM's invalidity department
declared Pepsi's design invalid, but the OHIM Board of Appeal
reversed this decision: Pepsi's design did not conflict with the
design of Grupo Promer because the design produces a 'different
overall impression' on the informed user. Because pursuant to
Article 10 (1) of the CDR only designs that do not produce a
different overall impression infringe upon a design, there is no
infringement and the designs of Pepsi and Grupo Promer can simply
coexist - thus ruled the Board of Appeal.
Judgment of
the European Court of First Instance
Grupo Promer then lodged an appeal with the European Court of
First Instance. The Court pointed out that when posing the question
of whether a different overall impression is produced, the degree
of freedom of the designer in developing his design shall have to
be taken into consideration (Article 10 (2) of the CDR). If this
freedom was restricted, minor differences between the designs
suffice to be able to produce a different overall impression (as a
result of which there is no infringement). With regard to the
rappers, the Board of Appeal of the OHIM had ruled that the freedom
of the designer of the design is severely restricted: all rappers
are flat disks made of plastic or metal disks on which colored
images can be printed and which are curved toward the centre, so
that a noise is made if the centre of the disk is pressed. Without
these features a rapper would have little chance of being accepted
in the market. The Court followed this conclusion of the Board of
Appeal and therefore assumed that the freedom of the designers of
the rappers is very restricted. The question will then be how the
designs of Pepsi and Grupo Promer must be compared in order to
determine whether they can coexist. The Court ruled in this respect
that the informed user will concentrate on the features of the
design 'that are arbitrary or different from the norm' and not on
the features that are characteristic for a rapper in general. Next,
the Court compared five various aspects of the rappers of Pepsi and
Grupo Promer in which the designer was actually free to make its
own choices. The Court then comes to the conclusion that the
differences in these aspects are too minor in order to be able to
bring about a 'different overall impression' on the informed user.
The decision of the Board of Appeal is therefore reversed, as a
result of which Pepsi's design application must be considered
invalid after all.
Conclusion
The contents of this judgment of the Court are in line with case
law we know from other fields of intellectual property law that
protect the appearance and the design of products. In brief, when
it is possible to keep a distance from the appearance of other,
already existing products, a designer must do so. If this does not
happen, there is infringement. Since the judgment of the Court we
know that this applies also to European design law.