There is No Substitute for a Porsche – Except another Porsche?

In English-speaking countries, Porsche markets its cars with the slogan “There Is No Substitute”. But can a new Porsche be a substitute for an old Porsche? In a recent decision (T-209/18), the EU General Court suggests that there is no point in asking, as most people would not even notice the difference.

On the left hand the newer 991,
on the right hand the older 997…
or is it the other way round?

The Facts

Since its inception in 1963, the 911 has likely been Porsche’s best-known model series, one that Wikipedia describes as having “undergone continuous development, though the basic concept has remained unchanged.” In 2010, Dr. Ing. h.c. F. Porsche AG registered a community design for the then new model range (internal code: 991) of the Porsche 911. In 2014, Autec AG requested that the community design be cancelled for lack of novelty and individual character over Porsche’s own design for the previous version of the 911 (internal code: 997), within the meaning of Art. 5 and Art. 6 of the Community Design Regulation (EC) No. 6/2002 (“CDR”).

The EUIPO agreed, cancelling Porsche’s design for lack of individual character and the Board of Appeal upheld the decision. Porsche then filed an action with the EU General Court to overturn the decision and have Autec’s request for cancellation dismissed. 

How Informed should an Informed User Be?

Under Art. 6 CDR, a registered design has individual character if the “overall impression it produces on the informed user differs from the overall impression produced on such a user” by another design made available to the public before the priority date.

Porsche contended that in the segment of “expensive luxury sedans and sports cars”, the “informed user” should not be a fictitious person who supposedly knows some automobile designs. Rather, the “informed user” should be determined empirically with a view to the relevant product. In the case at hand, such informed users should have very thorough knowledge of the kind of products at issue.

The General Court disagreed. First, it recalled that the registered design was not claiming “luxury sportscars” but broadly “motor cars, buses and lorries”, i.e. the heading of class 12-08 of the Locarno classification. In addition, the General Court found that the EUIPO had been right to ignore the survey evidence presented by Porsche, allegedly prepared by surveying the responses of a population “knowledgeable of sports cars”. The “informed user” is not a real person and his degree of attention cannot be determined empirically. 

A Porsche Does Not Need to Look like a Porsche… or Does It?

As a general rule, if the freedom of design is limited, small differences can lead to distinct overall impressions. These design limitations can derive from several sources. Take, for example, the effect on the freedom of design due to certain legal requirements: all cars need to have headlights and rear-view mirrors. Porsche added that, in the case at hand, the freedom of design was strongly limited by the expectation of the public that, in short, "wants a Porsche to look like a Porsche". The General Court disagreed. The relevant test is the freedom to design a car, not the freedom to design a Porsche (or any other specific product). 

Finding the Overall Impression is Not a Game of “Spot the Difference”

The comparison of the overall impressions created by the designs must not merely consist of a comparative list of similarities and differences (see Roca Sanitario/OHIM – Villeroy & Boch, T‑334/14). Two designs are regarded as identical if their characteristics differ only in insignificant details, that is to say, in details which do not give rise to any differences in the overall impression.

In the case at hand, the General Court found that the differences between the 997 and the 991 designs are insignificant. The Court noted that the differences underscored by Porsche, such as the convex headlights or the allegedly new door handles, do not create a distinction between the design of the two models, based on the pictures in the registered designs. The Court acknowledged that while small differences can be perceived with respect to the rear lights, the bumpers, the exhaust pipes, the trunk lid and the “generally broader and flatter frontal part”, none of them changes the overall impression of the identical form and silhouette of the two models.

Finally, the General Court was not impressed by the 991 model’s winning the Red Dot Award for Product Design 2012, which lauded the “entirely [new]” form or the “largely [modified]” proportions of the vehicle. Design juries apparently do not meet the Court’s criteria of “informed users”. Indeed, this evidence was disregarded in light of other press articles that lauded Porsche for optimizing and adapting “always the same silhouette”. 

Comment

Though it may be little comfort to Porsche, the decision can be read to highlight the mastery of Porsche designers in the sense that they have managed to update the same form over and over for more than 55 years. The seemingly timeless design of the original remains immediately recognizable; only connoisseurs will spot (if at all) the subtle differences between two recent models. More generally, the decision highlights the difficulty faced by designers (not only those employed by luxury sportscar manufacturers) whenever they are asked to update or refresh an existing design, while making such changes as subtle as possible.