A table and a table coaster that shaped EU design law

This year marks the 10th anniversary of the Court of Justice’s (CJEU) landmark judgment in Pepsico v Grupo Promer Mon Graphic (C-281/10P). In this ruling, which originated from a design invalidity claim before the EUIPO (OHIM, as it was known then), the Court of Justice construed the meaning of the ‘informed user’.

Under EU design law, the ‘informed user’ is the standard on the basis of which it examines both the validity and the infringement of a design. Under art. 10 of Design Regulation 6/2002, the scope of the protection conferred by a Community design shall extend to ‘any design which does not produce on the informed user a different overall impression’. Regulation 6/2002 does not define, however, what an ‘informed user’ is.

It was, therefore, probably only a matter of time until construction of this term would reach the CJEU. In paras. 53 to 59 of PepsiCO, the CJEU provided an extensive definition of ‘informed user’. It stated that

that concept must be understood as lying somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise. Thus, the concept of the informed user may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question.

Since then, this definition has been widely applied by national courts of EU Member States.

Nevertheless, what is rarely discussed in commentaries and academic literature are two national rulings, one from France and the other from Germany, which served as the basis for the Court of Justice's ruling when it defined the term ‘informed user’ in PepsiCo.

The first case was decided by the Paris First Instance Court (formerly known as Tribunal de Grande Instance de Paris) in 2002. The case was based on equivalent provisions of French law, implementing the Design Directive 98/71/EC. Aude Fabry, a furniture designer, accused Habitat France, a household retailer, of infringing her design rights to a table (to the left). In turn, Habitat claimed invalidity of the plaintiff’s design, citing several prior designs of allegedly similar features. The issue of informed user was thus crucial to both parties.

In its ruling, the court stated that the informed user is not—

a person skilled in the art but may be understood as referring not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question.

This definition was later repeated, word for word, in para. 53 of the PepsiCo judgment.

The second ruling was issued by the Higher Regional Court of Frankfurt am Main, in 2008. In this
case, Alessi, an Italian houseware company, claimed infringement of its Community design rights to a table coaster made of metal rods (to the bottom right). The question of overall impression, produced on the informed user, was once again in the spotlight.

The Court, relying heavily on academic commentaries, gave the following definition of the ‘informed user’.

The user is "informed" within the meaning of [Design Regulation] if, first, he has a basic legal knowledge of the prerequisites for protectability (for example, if during the comparison he hides technical features), if he knows about the function, mode of operation and the field of use of the respective product, if has a certain general knowledge of the wealth of shapes, and, finally, if he has at least average ability to judge, training, intellect, style and taste. The legislator speaks of "a certain level of ... design awareness" […]. The informed user is to be placed between the average consumer […] and the person skilled in the art […].

Here, the German court first introduced what has become a basic concept of EU design law: the informed user is placed between the average consumer from trade mark law and the person skilled in the art from patent law. This approach was later set in stone in para. 53 of the PepsiCo ruling. However, some other aspects from German design law jurisprudence (such as the informed user’s presumed style and taste) were not adopted by EU judiciary. Coming back to the German national case, the court concluded that the defendant’s coaster infringed the plaintiff’s rights. This ruling was later confirmed by the German Federal Court of Justice in I ZR 71/08.

These cases show that, regardless of whether you are a practitioner looking for a defense for you client, or an academic struggling with why a certain provision appeared, seemingly out of nowhere, in an EU judgement, directive or regulation, it is advisable from time to time to wear your historian hat and search for its genesis in the legal regimes of the member states. You might be surprised how frequently they have contributed to shape the EU acquis.