The main reason for reversal within OHIM was a narowing redefinition of the class of article considered from "promotional items" (the indication of product for which the design was registered) to "metal rappers" (aka "tazos" or "pogs") in particular, with the consequence that the "design freedom" available was held to be narrow rather than broad and the threshold required to differ from the state of the art was therefore lower. The ECJ upheld the Board of Appeal on this point (as it did on most of the legal issues in play in the appeal), but nonetheless found the design similar enough to the prior art to lack individual character.
Some specific points of interest:
1. Grupo Promer Mon Graphic tried to introduce new documents in the appeal to the General Court - apparently in reply to the OHIM appeal decision below. These were "excluded, without it being necessary to assess their probative value (see, to that effect and by analogy, Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 19 and the case-law cited)." (Decision para 24).
2. Grupo Promer Mon Graphic argued some bosh based on "bad faith" (which always tends to sound a little desparate to these Anglo-Saxon ears), in that there was an alleged confidential disclosure to Pepsico before they filed. According to the General Court, the grounds listed in Article 25(1) of Regulation No 6/2002 "must be regarded as exhaustive, since Article 25 provides that a Community design may be declared invalid only on one of the grounds specified therein." (Decision para 30).
Perhaps the same fact-pattern could have formed the basis for a copyright infringement (Article 25(1)(f)) or entitlement (Article 25(1)(c)) challenge - the latter, however, could not have been brought at OHIM until after a national Court decision.
3. The Court considered one of the many bizarre language discrepancies which plague the Regulation (and the corresponding Directive 98/71); "in the vast majority of the language versions, the wording of Article 10(1) of Regulation No 6/2002, like that of Article 9(1) of Directive 98/71, indicates that the issue is one of a ‘different overall impression’. Two language versions (namely the French and Romanian language versions) in the case of Article 10 of Regulation No 6/2002, and one language version (namely the French language version) in the case of Article 9 of Directive 98/71, state that the issue is one of a ‘different overall visual impression’." They considered that there was no difference of substance as the "overall impression" must be a visual one (Decision para 50).
That appears to lay to rest an interesting discussion, going back to the earliest preparatory documents, as to whether the sense of touch can play a part in assessing overall impression, given that features such as "material" and "texture" form part of the definition of a design.
4. "Conflict" with an earlier-filed unpublished design as a ground of invalidity (Article 25(1)(d)) arises when the later falls within the scope of protection of the earlier by creating the same overall impression, as OHIM have consistently held since their 2004 Eredu v Arrmet invalidity decision.
5. Although the indication of product given in connection with a RCD does not affect the scope of protection, it can be used to determine the product used in various parts of the "overall impression" test, such as the "design freedom" subtest. However, where there is a particular category of products within a broad category defined by the "indication of product", this also can be used, as the Board did in this case (Decision paras 59-60). Applicants will therefore need to give a little thought to indications of products in future, as we have thought possible since OHIM Appeal Decision R 1421/2006-3, the Cash Register case.
6. As to the "informed user", the General Court held that "the informed user is neither a manufacturer nor a seller of the products in which the designs at issue are intended to be incorporated or to which they are intended to be applied. The informed user is particularly observant and has some awareness of the state of the prior art, that is to say the previous designs relating to the product in question that had been disclosed on the date of filing of the contested design, or, as the case may be, on the date of priority claimed." (Decision para 62). That much is certainly in accordance both with OHIM and UK case law, and the phrase "particularly observant" could be read as supporting Lord Justice Jacob's view in Procter & Gamble v Reckitt Benckiser that the person concerned is more acute than her trade mark counterpart.
7. In this case, the "promotional product" was an intermediate product which was for advertising other things. Thus, the "informed user" could be either a child of 5-10 (the end user) or a marketing manager of some other product (an intermediate trade user), as the Board of Appeal had said, although it made no difference in this case (Decision para 64). I do not read the decision as indicating that the "informed user" is in trade in the goods themselves (i.e. the metal rappers).
8. In relation to "Design Freedom", the crux of the case, the Court referred (Decision paras 67-70) to the following factors as limiting design freedom:
- features imposed by the technical function of the product;
- statutory requirements applicable to the product;
- cost (these items had to be inexpensive);
- safety for children;
- fitness to be added to the products which they promote.
10. In relation to the comparison itself, the Court gave a number of pointers:
- Similarities in features common to a class of product (here: the metal rappers) will have only minor importance in the overall impression (Decision paras 72, 76 &; 77);
- Similarities in features imposed by constraints on design freedom will not attract the informed user's attention (Decision paras 72 & 78).
- Similarities in the most visible portions (here: the upper surface) will attract the informed user's attention (Decision para 82).
Secondly, the Court's analysis does not start by defining in vacuo an overall impression produced (a) by the design and (b) by the prior design, and then comparing the two: instead, the Court proceeds to look at paired features of the two as similarities and rule on each in turn, giving each an appropriate weight. I suppose this might arise from the function of conducting a review of the decision below, but it is a different algorithm, which might lead to different results.
What do you all think? Should Pepsico appeal? Comments welcome!
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