Five-year-old experts

A recent decision by the European Court of Justice (CJEU), Grupo Promer Mon Graphic SA v OHIM, PepsiCo Inc (C-281/10) has provided clear guidance on the definition of the “informed user” for the purposes of assessing infringement of community registered design rights (CRD).

Since 2001, a CRD offers designers a relatively simple and cost effective way to protect new designs for products throughout the European Community. Grupo owned a CRD for “pogs”, a small metal disc used in a game popular in the 1990s. Pogs are often given away by companies as a promotional tool, particularly in food and drinks aimed at children.

PepsiCo also owned a CRD for pogs, which it described as “metal plates for games”. Grupo applied to OHIM for a declaration that the PepsiCo design was invalid because, among other things, it lacked novelty and individual character as required in terms of article 25(1)(b) of Regulation 6/2002 on Community designs. One issue the court required to consider was the test under article 6, which provides that a (later) design “shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by [an earlier design]”.

The “informed user” is not defined, perhaps surprisingly as it is fundamental to a finding of infringement of a CRD. The concept had not previously been considered by the CJEU (in fact this is the first CRD case to come before it).

Better informed

The CJEU gave guidance on three key aspects: who the informed user is; the nature of the comparison the informed user carries out to determine infringement; and the level of attention applied in making the comparison.

The court held that the concept of the informed user must be understood as lying somewhere between that of the average consumer familiar in trade mark law (who is reasonably well informed and reasonably observant and circumspect), and the sectoral expert who has detailed technical expertise. The informed user is therefore one who is “particularly observant… either because of his personal experience or his extensive knowledge of the sector in question”. In this case, the informed user was held to be either a child between five and 10 years old, or a marketing manager in a company that promotes its goods by giving away pogs. The court took a pragmatic approach based on the market in which the pogs were used, and was prepared to consider that there may be more than one appropriate “informed user”.

In terms of the comparison carried out, the CJEU held that, where possible, the informed user “would make a direct comparison between the designs in issue”. It acknowledged that this was not always practical, or might be uncommon in the sector concerned, so the applicability of this aspect will depend on the facts and the nature of the products.

With regard to the level of attention applied in carrying out the comparison, the CJEU held that the informed user is not capable of “observing in detail the minimal differences that may exist between the designs in conflict”, but is deemed to have knowledge of the designs in the relevant sector and will show a “relatively high degree of attention” when using the products.

Previously, the General Court held that the differences between the respective pogs (the PepsiCo pog had two additional concentric circles clearly visible on the surface, and was slightly curved, whereas the Grupo design was mainly flat) were not so significant that the informed user would remember them on an indirect method of comparison based on imperfect recollection. This decision was based on the evidence before the General Court and was not one with which the CJEU felt it could interfere.

Comment: helpful clarification

This decision of the CJEU provides welcome guidance on the appropriate test for determining who the informed user is, and the level of expertise and analysis they are expected to employ in CRD cases. The English courts have used a broadly similar test in relation to CRD and UK registered designs in the recent cases of Procter & Gamble v Reckitt Benckiser (UK) [2007] EWCA Civ 396, and Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206, but the CJEU’s confirmation of this approach is nevertheless welcomed.

Its guidance is also relevant because of recent judicial commentary (particularly in England) placing a limited role on expert evidence in UK registered design/CRD cases. Instead, in assessing validity/infringement, they have advocated focusing on the registered design, the alleged infringing object and the prior art. Thus, the identity and nature of the informed user becomes vitally important, and the CJEU’s decision is therefore a timely one.