First Ruling on Community Designs by General Court of the European Union
- Sweden
- 04/19/2010
- Roschier, Attorneys Ltd. - Sweden
The General Court of the European Union (“GCEU”) has handed down its first decision concerning a Community design in case T-09/07 (Grupo Promer Mon Graphic SA v. OHIM; counterparty PepsiCo Inc.). The ruling came seven years after the system for registered Community designs was created in 2003 by Council Regulation (EC) No. 6/2002. Before the ruling, the related case law was limited to decisions of the Board of Appeal of the Office for Harmonization in the Internal Market (“OHIM”).
Under Regulation No. 6/2002, designs which are novel and have individual character may be protected as Community designs. Protection is granted against designs which do not produce a different overall impression on the informed user. In assessing the scope of protection, inter alia, the degree of freedom of the designer in developing his/her design is taken into consideration. As opposed to the Finnish National Board of Patents and Registration, OHIM does not conduct any ex officio examination of novelty. Consequently, under the Community design system, possible claims of invalidity are examined retroactively after the grant of the design.
In the case ruled upon by the GCEU, the court had been requested to annul OHIM Board of Appeal’s decision to uphold the registration of PepsiCo’s design for the shape of a “rapper” for promotional items for games. Rappers are flat pieces designed to allow them to be moved around and flipped easily, thus enabling the products to be used for playing games. The GCEU agreed with OHIM’s considerations regarding the knowledge of an informed user (a child between the age of 5 to 10 in this case) and the fact that the designer’s freedom was limited in terms of shape, cost, safety and fit on the products in question. However, the GCEU nevertheless concluded that OHIM had erred in finding that the two designs under consideration would produce a different overall impression on the informed user. Consequently, the GCEU ruled in favor of the appellant, annulling the OHIM Board of Appeal’s decision to dismiss the application for a declaration of invalidity.
