Pog appeal - the A-G's Opinion

As trailed here a day or two back, Advocate-General Mengozzi has given an Opinion on the Pepsico/Grupo Promer Mon "pogs" appeal (Case C-281/10 P PepsiCo v Grupo Promer Mon Graphic).  These Opinions are usually followed by the ECJ, and often provide more detail than the eventual judgment.

This one contains both procedural and substantive points. 

Procedure

1. As we guessed some time back, the Advocate-General has taken the view that many of the grounds of appeal are really points of fact (which are not appealable to the Court of Justice) - "undeniable that the arguments adduced by PepsiCo are designed solely to call into question the findings of fact made by the General Court." (para 35).
   
   
2. The A-G considers (rightly I think) that there isn't any basis for treating appeals on design cases any differently from those on trade mark cases (paras 71-75).  Thus, the General Court has a wide freedom to examine the appeal and substitute its own views for those of OHIM.
   
   
3. On the use of samples as a substitute for the registration in comparison (a topic of disagreement between Courts and commentators), the A-G takes a pragmatic view that it was allowable in the circumstances of this case (though his logic applies to pretty much any other case too - para 83). That is not inconsistent with what the UK Courts have done in the past.

Substance

1. On the nature of the "informed user", "generally speaking, the informed user is not a ‘technician’ with special knowledge, but just a user who is a little more attentive and interested than the average consumer: in other words, a user of whose perceptions the General Court is able to form an adequate picture." (para 74).   That will be music to the ears of those judges who don't want design cases to be overburdened with expert or survey evidence.  As to his/her attitude, "...the General Court envisaged an informed user who was anything but superficial and inattentive, even if lacking the analytical acumen which, if anything, is the hallmark of an observer of patents." (para 67).
   
   
2. On the use of "imperfect recollection" in design comparison, the A-G comments that the General Court did not in fact use that analysis (despite language which was "a little infelicitous"), but that in any event the law does not exclude either direct or indirect comparisons and there are occasions where an indirect comparison may be useful or necessary as a practical matter (paras  49-50, 55).

We will keep you posted when the Court of Justice gets round to a final ruling.

Baena case: gnomic utterance awaited

On the right, a Community trade mark; on the left,
an apparently valid later registered Community design

"Take that expression off your face - if you want to keep your design" wrote Class 99 team captain David Musker (here), when relating the lamentable tale of the General Court's ruling in Case T-513/09 José Manuel Baena Grupo, S.A. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and Herbert Neuman and Andoni Galdeano del Sel. David wrote then:

"As with several earlier General Court and OHIM decisions, the citation was taken "as a whole" and no thought was given to comparing like with like - since the design has no mouth, surely the fair comparison is to compare that part of the citation without a mouth to the design? In the context of an infringement, the implication of the General Court's approach is that one could take the entirety of a design, add something and thus avoid infringement. Is that right? What do you think, dear readers?".

Since most dear readers did not take the trouble to think or -- if they did -- they didn't take the trouble to tell Class 99, the unsuccessful party has had to take the step of appealing to the Court of Justice of the European Union, whose gnomic utterance we eagerly await.

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Stop press: I've just noticed that there are two separate appeals in this case. In Case C-101/11 P the appellants are Herbert Neuman and Andoni Galdeano del Sel while in Case C-102/11 P the appellant is OHIM itself.

Take that expression off your face - if you want to keep your design

The General Court has taken its fourth substantive Community Design appeal decision, Baena Grupo v OHIM T-513/09, on these two rather angry gnomes (or "lutins grognant"as the French text has it) - here, in French (Spanish also available).
The case has had a rather erratic history. The citation, on the right, is a published Community Trade Mark (CTM 1312651), and at first instance the Community design (RCD 426895-0002, on the left) was invalidated over the citation considered as a prior right, as being a mis-use (i.e. an infringement) of the trade mark.
The Appeal Board overturned that in Decision R 1323/2008-3 (here, in Spanish), ruling that "use" of an earlier mark in this context did not cover use of something similar (in contrast to the well-known MIDAS decision?) but held it invalid nonetheless, this time on the basis of lack of individual character over the citation considered as prior art.
What did the General Court say? They reversed the Board of Appeal, despite what one might reasonably think to be the overall similarity between the two. The twin bases were: firstly, the identity of the informed user - a teenager or a younger child (the latter was quite important), and secondly, the importance of the angry facial expression (and perhaps pose also) in the citation, as being the thing which would stick in the memory of that informed user.
From a UK point of view, it therefore makes an interesting contrast with the approach in Procter & Gamble v Reckitt Benckiser, firstly because this "informed user" is not stated to be attentive or particularly interested in design issues (and is hence pretty undiscriminating), and secondly because of what seems to be quite a strong role for the doctrine of "imperfect recollection", held in P&G to have lesser significance in design cases.
As with several earlier General Court and OHIM decisions, the citation was taken "as a whole" and no thought was given to comparing like with like - since the design has no mouth, surely the fair comparison is to compare that part of the citation without a mouth to the design? In the context of an infringement, the implication of the General Court's approach is that one could take the entirety of a design, add something and thus avoid infringement. Is that right? What do you think, dear readers?