UK: Who Let The Pogs Out? PepsiCo Takes Its Pogs To The European Court Of Justice

Last Updated: 7 June 2011
Article by Tom Scourfield, Stuart Helmer and Tom Reid

Advocate General Mengozzi delivered his opinion on 12 May 2011 in the long-deliberated Case C-281/10 P Pepsico, Inc.  The opinion considers designers' degree of freedom in designing goods and provides clarity on the meaning of the "overall impression" made by a design, as set out in Regulation No 6/2002.  The Advocate General goes on to define the notional informed user of designs, declaring that it is neither a general consumer nor an expert with specific technical expertise, but someone who sits between the two.  The Advocate General also considers the informed user's method of comparing goods, noting that direct comparisons are suitable in some cases.  If the European Court of Justice (ECJ) chooses to follow the Advocate General's opinion, owners of designs will have a better understanding of the strength of their design rights thanks to these definitions.

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Summary

Advocate General Mengozzi delivered his opinion on 12 May 2011 in the long-deliberated Case C-281/10 P Pepsico, Inc.  The opinion considers designers' degree of freedom in designing goods and provides clarity on the meaning of the "overall impression" made by a design, as set out in Regulation No 6/2002.  The Advocate General goes on to define the notional informed user of designs, declaring that it is neither a general consumer nor an expert with specific technical expertise, but someone who sits between the two.  The Advocate General also considers the informed user's method of comparing goods, noting that direct comparisons are suitable in some cases.  If the European Court of Justice (ECJ) chooses to follow the Advocate General's opinion, owners of designs will have a better understanding of the strength of their design rights thanks to these definitions.

Background

Grupo Promer Mon-Graphic SA ('Promer') filed an application for the following Community design with OHIM for "metal plates for games" under No. 53186-01 on 17 July 2003:

Promer claimed priority on the basis of Spanish design No 157098 filed on 8 July 2003.

On 9 September 2003, PepsiCo filed an application for a similar Community design in respect of "promotional items for games," as follows:

Priority was also claimed for a Spanish design, No 157156 filed on 23 July 2003.

Both designs relate to pogs, the playing pieces to a children's game.  Pogs are frequently included in packaging as promotional toys or free gifts for children.

Law

Regulation No 6/2002 states at Article 6 that a design must have individual character.  A design is considered to have individual character if "the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public."  In particular, the designer's degree of freedom in developing the design will be considered.

Court Proceedings

The case first appeared before the Office for Harmonisation in the Internal Market ('OHIM') in 2004, where OHIM took the view that PepsiCo had a great degree of freedom in choosing which type of promotional toy to include in its packaging, and that PepsiCo's pogs unnecessarily produced the same overall impression as those of Promer.

PepsiCo appealed to the Board of Appeal of the Cancellation Division, where it was found that the designer's degree of freedom was limited to just within the category of pogs, but small differences were enough to effect a different overall impression.

In turn, Promer brought the decision of the Board of Appeal before the General Court, which agreed freedom of design was limited to the category of pogs, but ruled that the designs were too similar to produce a different overall impression on the informed user. It thereby annulled PepsiCo's victory in front of the Board of Appeal.

European Court of Justice ("ECJ")

PepsiCo, unpersuaded by the General Court's reasoning, then appealed to the Court of Justice of the European Union.  On 12 May 2011, Advocate General Mengozzi delivered his opinion which strongly calls for the appeal to be dismissed.

The Advocate General visits a number of issues in his reasoning. He notes that a significant number of the grounds of appeal are actually points of fact, and that findings of fact are not suitable for appeal to the ECJ.  He states rather strongly at paragraph 35 of his opinion that it is not for the Court of Justice to reconsider factual assessments made by the General Court, and therefore sees these issues as inadmissible. 

Perhaps of most interest is that the opinion goes into considerable depth of discussion regarding the definition of the "informed user" of the design.  According to the Advocate General, the informed user is "not a general consumer who might, entirely by chance and with no specific knowledge, also come into contact with the goods characterised by a particular design.  Nor yet is the informed user an expert with detailed technical expertise."  He further explains that 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." 

The Advocate General has also confirmed that when the notional informed user is considering the competing goods, he may make a direct comparison of the pogs.  The comparison does not need to be based on a "vague recollection" of the pogs, but can be imagined to be a comparison of the pogs held in each hand and considered together.  However, the Advocate General notes that "imperfect recollection" in designs must be considered on a case-by-base basis, as in some situations, the informed user may equally compare the pogs with some time in-between each viewing. 

Finally, the Advocate General also comments on the importance of the "overall impression," writing that in some cases, where there is a limited degree of freedom, small differences will potentially be enough to represent individual character.  He gives the example of a kitchen table with four legs, which is the standard design of a kitchen table: another competing kitchen table will not be considered identical merely because it also has four legs.  He states, "Where designs are characterised by significant constraints on the designers' creative freedom, small differences may, generally, be sufficient to produce a different overall impression."  In the context of the pogs, however, the General Court found that pogs may have "triangular, hexagonal or oval rather than circular" central imprints, "and it is not for the Court of Justice to reconsider that assessment."

Comment

The Advocate General's opinion is not binding, so it remains to be seen how the ECJ decides this appeal.  If it follows the opinion, however, the definition of the informed user and the concept of the "overall impression" may provide design holders with a much better idea of the strength of their design rights.

The Advocate General's opinion on Case C-281/10P PepsiCo, Inc can be found here.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.

The original publication date for this article was 03/06/2011.

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