Pepsico v Grupo Promer: The Court of Justice makes a good impression

This article was included in the winter 2011/12 issue of snIPpets - the intellectual property newsletter.

On 20 October 2011, the Court of Justice gave its first substantial ruling on Registered Community Designs. 

One of the lesser known IP rights, Registered Community Designs (RCDs) can be used to protect the appearance of newly designed products throughout the EU, providing the designs have sufficient novelty and individual character.  The RCD can then be enforced against third party products which make a similar overall impression, taking into account the freedom of the designer.  This assessment of the overall impression made by two designs is judged from the perspective of the informed user.

The present case compared two designs of discs used for a playground game best known under the brand name Pogs.  Pepsico's application for registration of its design of Pog disc as an RCD had been blocked by Grupo Promer on the basis of its earlier RCD, which it argued made a similar overall impression on the informed user.

The matter had been before the Office for Harmonisation of the Internal Market and then before the General Court, who found that the designs did produce a similar overall impression.  Pepsico therefore appealed to the Court of Justice arguing that the General Court was incorrect in its characterisation of the informed user.

Pepsico argued that the General Court had characterised the informed user by analogy with a reasonably well-informed and circumspect average consumer which is the perspective from which trade mark cases are judged.  Pepsico argued that this was wrong and that the informed user for the purpose of design law is a much more highly attentive technical expert who will compare goods side by side, looking carefully at the details, rather than focusing on the more obvious and "easily perceived" aspects of the design.

The Court of Justice took a middle road, finding that the informed user falls between these two extremes.  While the informed user is not a technical expert, and may not have the opportunity to compare two designs side by side, they will have a particular interest in the products in question and are likely to have an extensive knowledge of the relevant sector. 

For example, in the present case, the informed user could equally be a child who is particularly keen on playing Pogs or a marketing manager who has been involved in selecting a distributing Pog discs for promotional purposes.  Either way, they will show a higher degree of attention than the average consumer and will be particularly observant when assessing whether a design differs from one with which they are familiar.  In this way, the informed user can therefore be characterised as one whose appreciation of the designs at issue is conditioned by their personal experience of and enthusiasm for the products in question.

In Practice

For those using the IP system, the case brings a welcome note of clarity to one of the key concepts in RCD law.  While there remain many grey areas in relation to this less widely used right, for example the key question of assessing constraints on design freedom, by clarifying the nature of the informed user the Court of Justice brings us one incremental step closer to a robust and predictable system of Registered Community Designs.

Hastings Guise, senior associate, IP Protection and IP Enforcement and Litigation at Fieldfisher.