Pogs: the Advocate General speaks

What design law enthusiasts have been waiting for: Advocate-General Mengozzi gave his Opinion in the  "pogs" appeal (Case C-281/10 P PepsiCo v Grupo Promer Mon Graphic) on 12 May. This is the first case on Registered Community Designs to come before the European Union’s highest court.

PepsiCo had registered the design; the cancellation division at OHIM had declared the registration invalid; and the Board of Appeal had allowed PepsiCo’s appeal. The General Court largely upheld the Board of Appeal’s legal analysis, but held that the design was not sufficiently different from Promer’s earlier one. PepsiCo appealed.

The case raises both procedural and substantive points. The ground for the appeal was that the General Court violated Council Regulation (EC) No. 6/2002 in five respects:

• It had failed to take into account the constraints on the designer in developing the contested design; 
• It had wrongly interpreted the notion of the "informed user" 
• It had erred in considering the attention level of the informed user; 
• It carried out a comparison between the designs based on actual products in the file rather than on the designs as registered; and 
• It based the comparison on distorted facts. 

The Advocate General considered that many of the grounds of appeal are really matters of fact, which cannot be appealed to the Court of Justice: he said of some of the points that it was "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).

He also said that in his view there is no reason to treat appeals on design cases any differently from those on trade mark cases (paras 71-75). The General Court has a wide freedom to examine the appeal and substitute its own views for those of OHIM. 

The constraints on the designer’s degree of freedom

It was not for the Court to call into question the findings of the General Court on this point, which were matters of fact not law. 

The concept of ‘informed user’

The Advocate General considered that:

"… 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).

Design cases will therefore, to widespread relief, be saved from getting overburdened with expert or survey evidence.

As for the application of the concept of "imperfect recollection" in comparisons of designs, the AG thought that the General Court had not in fact uses that analysis, although the language of its judgment was "a little infelicitous". Anyway, the law does not exclude either direct or indirect comparisons and sometimes an indirect comparison may be useful or necessary as a practical matter (paras 49-50, 55). 

The attention level of the informed user and the scope of review by the European Union judicature

The next point concerned the attitude of the informed user. The Advocate General agreed with the General Court:

...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).

The review focused on the goods rather than on the designs at issue

Regarding using samples instead of the registration in the comparison exercise, the AG took a pragmatic view. He thought it was allowable in the circumstances of this case, and probably every other case too:
83. In any event, it seems to me that it is entirely proper – if, as in this case, it is physically possible – to take account of the actual goods characterised by a specific design. As we have in fact seen, the relevant public for assessing designs is made up of informed users, who are not experts, but simply individuals who are particularly interested in and attentive to such goods. In the present case, the informed users include children aged between 5 and 10 years. In those circumstances, it is quite right that the General Court should also have considered the goods in the form of the ‘real thing’, as seen and perceived by the informed users, who, it should be pointed out, do not usually ever see the registrations of the designs, but only their ‘practical application’, that is to say, the goods characterised by those designs. At the hearing, PepsiCo itself considered it appropriate to show the Court of Justice a number of ‘pogs’ to clarify some of the points contained in its observations.

This is pretty much the same approach as that of the UK courts, which take the view that otherwise it is difficult to compare like with like. 

Distortion of the facts

This argument was to no-one’s surprise rejected as inadmissible.