For three years Pepsico battled hard for a Community registered design protecting promotional items for 5-10 year olds. The opponent said Pepsico’s design for small metal or plastic discs was too close to its own registered design. Jessica Stretch spins the verdict.
Topic: Intellectual property
Who: Pepsico Inc. v Grupo Promer Mon-Graphic SA
Where: OHIM Board of Appeal
When: 27 October 2006
What happened:
In September 2003, Pepsico filed a Registered Community Design ("RCD") application for "promotional items for games" which constituted a small, thin disk known as a "pog" or "tazo" commonly given away with biscuits or potato snacks, for a popular children's game. Grupo Promer filed an application for a declaration of invalidity against Pepsico's RCD on the basis that it lacked novelty and individual character. Grupo Promer based its application on its pre-existing RCD for a similar item registered for "metal plates for games". Both parties' RCD's had all the basic features in common, being round in shape with an outer edge surrounding a central area; they differed only by small variations in the surface pattern and contours.
Article 25(1)(d) of the Community Design Regulation No. 6/2002 (CDR) provides that a Community design may be held invalid where it is in conflict with a prior design. The legislation does not define "in conflict with" however the Invalidity Division interpreted the provision to mean that a conflict arises when the two designs produce the same overall impression on the informed user.
The issue to be decided by the Board of Appeal was whether the parties respective RCD's did in fact produce the same overall impression on the informed user. In determining whether two designs produce the same overall impression on the informed user it is necessary to disregard elements that are common to all examples of the type of product in issue. The informed user will automatically discard common features and will focus on features that are different. Central to this decision was a consideration of the degree the designer's in developing the design according to Article 6(2) CDR. Both RCDs are for promotional items known as "pogs" or "tazos" and therefore the designers freedom is very limited as the product must be a small flat disk on which colour images can be printed. Consequently, relatively small differences would suffice to create a different overall impression. In this case Pepsico's RCD had slightly different surface decoration by the addition of two concentric circles and different contours by a raised area sloping upwards in the direction of the centre.
Given the limited freedom of the designer, the Board of Appeal held that the difference in the profile of the two designs was sufficient to mean that they produce a different overall impression on the informed user. Accordingly the Board of Appeal annulled the Invalidity Division's contested decision and dismissed Grupo Promer's application for a declaration that Pepsico's RCD was invalid. In contrast to the Invalidity Division, the Board of Appeal defined the category of designs narrowly, as "pogs" rather than "promotional items for games" as considered by the Invalidity Division. It followed that ostensibly minor differences in the designs were sufficient to create an overall different impression.
Why this matters:
The provisions of the CDR have received limited judicial consideration to date. This case provides guidance on assessing whether a design has "individual character" within the meaning of the CDR and how this relates to the degree of freedom a designer has in developing a design.
Although one imagines that Pepsico did do initial searches here and reached a view similar to that ultimately formed by the Board of Appeal, this case also underlines that even giveaway promotional items should wherever appropriate be checked against existing registered designs so as to minimise the risks of infringement claims being raised
Jessica Stretch
Solicitor
Osborne Clarke London
jessica.stretch@osborneclarke.com
