18 March 2010

When a rapper equals a tazo


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Do you remember when you lastly unleashed a pog from a bottle or a cup containing a light drink? Such pogs are also referred to as “rappers” or – in Spain and Mexico – as “tazos”. Never mind when, I bet you never thought of those things as of subjects of intellectual property protection. Well, that being not enough, I guess you will be surprised again to find out that such rappers/tazos caused the Court of First Instance or, the General Court of the European Union, as it was renamed in the course of the Treaty of Lisbon, to deliver its first ruling on a Community Design case ever.

The Court had to deal with the request of the claimant Grupo Promer Mon Graphic to annul OHIM‘s grant of a Community Design to the defendant PepsiCo Inc.

The defendant had obtained a Community Design for the shape of a “rapper” (see the drawings in the ruling), but faced claimant’s application for a declaration of invalidity based on claimant’s senior Community Design for a “tazo” (see the drawings in the ruling) in pursuance to which defendant’s design lacked the novelty required by Regulation No 6/2002. Claimant further alleged that they had made their design available to defendant on a private and confidential basis and that such disclosure equated with a making available to the public. Thereupon the Invalidity Division of OHIM declared the contested design invalid on the basis of Article 25 (1) (d) of above regulation. PepsiCo appealed against this decision and as a result the Third Board of Appeal of OHIM annulled the decision of the Invalidity Division and dismissed the application for a declaration of invalidity. Accordingly, the Board of Appeal concluded that the difference in the profile of the designs at issue was sufficient to conclude that they produced a different overall impression on the informed user.

Grupo Promer Mon Graphic was reluctant to put up with such an outcome and went to the General Court requesting it to annul the decision of OHIM’s Board of Appeal. In particular, the claimant raised three pleas in law, alleging, (i) defendant’s bad faith and a restrictive interpretation of Regulation No 6/2002 in the contested decision, (ii) lack of novelty of the contested design and, (iii) infringement of Article 25 (1) (d) of Regulation No 6/2002.

With respect to allegations (i) and (ii) the Court made an interesting finding: Article 25 (1) of Regulation No 6/2002 lists the grounds on which a Community design may be declared invalid exhaustively and there is no reference to the bad faith of the proprietor of a contested design. Further, a disclosure on a private and confidential basis cannot be relied upon as it did not target the public and hence did not bar the defendant from novelty.

With respect to allegation (iii) the Court first opined that Article 25 (1) (d) of Regulation No 6/2002 must be interpreted as meaning that a Community design is in conflict with a prior design when that design does not produce  a different overall impression on the informed user from that produced by the prior design. Of course, when determining the above,  the informed user needs to take into consideration the freedom of the designer in developing the Community design. In applying this interpretation to the instant case, the Court held that the two additional circles of the contested design as well as its degree of curvature – when compared to the prior design – were insufficient for the contested design to produce a different overall impression on the informed user. Accordingly, OHIM’s Board of Appeal’s decision had to be annulled.

In my view this decision is very important for two reasons: (i) it is the first ruling of a Court of the European Union that deals with a Community Design and (ii) the Court utilises its ruling to provide for a useful guidance on infringement due to similarity and hence a lack of a different impression on an informed user.

 

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