Clarification of key concepts in relation to EU registered designs

A final decision has issued in relation to the first Community registered design (RCD) case to be appealed to the Court of Justice of the European Union (ECJ). The ECJ has largely followed the advice given by the Advocate General and therefore most of the grounds of appeal were rejected as inadmissible. However, the case is a landmark ruling because the ECJ took the opportunity to clarify, for the first time, a number of important but previously uncertain legal concepts in the Community Design Regulation.

These concepts include identifying the informed user, deciding how attentive this user is when comparing an alleged infringing design with a registered design, and whether the comparison should take into account the actual products in relation to which the registered design is expressed.

The case related to small circular promotional items known as “pogs”, which were the subject of an RCD by Pepsico. The ECJ held that the concept of the informed user is someone who “must be understood as lying somewhere between that of the average consumer, applicable in trade mark matters, and the sectoral expert, who is an expert with detailed technical expertise”. In this case, the informed user might be a child of age 5 to 10 who collects pogs.

The ECJ also held that the informed user is an attentive user of the design, and that “although the informed user is not the well-informed and reasonably observant and circumspect average consumer who normally perceives a design as a whole and does not proceed to analyse its various details, he is also not an expert or specialist capable of observing in detail the minimal differences that may exist between the designs in conflict”.

The ECJ decided that when the comparison of the infringing and registered designs is made by an informed user, this would inevitably take into account the actual goods marketed, which correspond to the registered designs. In other words, the correct test would not solely compare the registered design representations with the allegedly infringing products.

There is nothing surprising in these findings, but this decision increases legal certainty around these relatively new legal concepts.