Will an ECJ ruling change the approach to registering Community Designs?

Monday 15 July 2019

Lots of cars are recognisable, but which cars are considered iconic? Ford’s Model T? The Batmobile? This elite group certainly should include the Porsche 911, with its distinguishing design incorporating an instantly recognisable sloping passenger compartment.

To protect the car’s distinctive appearance, Porsche [i] registers every new iteration of the Porsche 911’s design, by means of an EU Community Design. This is frustrating for model car manufacturers, who must pay royalties to use these protected designs. They would prefer the designs had no protection and were free to use.

A manufacturer of model cars recently challenged the validity of Community Design registrations filed by Porsche, for two recent iterations of the Porsche 911 design [ii]. The model car manufacturer asserted that these new designs only minimally differed from the older versions. Therefore, they argued, the designs were not new, did not have individual character, and thus should not qualify for protection.

The office in charge of administering Community Designs [iii] agreed with the model car manufacturer. Porsche challenged this decision. Ultimately, the case came before the EU Court of Justice, who decided to uphold the initial finding of invalidity in relation to both designs [iv].

In its decision, the court discussed the concept of the informed user, a legal fiction employed to assess whether a design has individual character. The informed user “uses the product in which the design is incorporated” [v] and is in a position to compare other designs to the design in question. Clearly, the owner of a Porsche 911 would be a person who “uses the product in which the design is incorporated” and is therefore the informed user --- or so it used to be.

Porsche unsuccessfully argued that an informed user should be defined narrowly as a user of a Porsche 911 or a sportscar more generally. The court disagreed with Porsche, and an earlier court decision of the EU Court of Justice [vi], ruling that the informed user uses the type of product in which the design is incorporated. As a result, in relation to Community Design registrations for Porsche, the informed user is not the owner of a Porsche 911, but rather, is a car driver in general.

These two decisions also have implications for any business having or planning to obtain Community designs, since it appears that the legal situation has shifted for everyone.

It may be too early to make definite statements regarding the consequences of this shift, but we note two possibilities. First, car manufacturers could update their line-up with bolder new designs that significantly deviate from tried-and-tested older designs. This appears unlikely, however. Second, car manufacturers could now file Community Designs not for their actual cars, but for model cars. This could be a promising route forward, because the informed user of model cars will be different to the informed user of actual cars. Particularly, the informed user of model cars will presumably be a collector who pays much greater attention to details of the design of the model cars, than an average driver. Accordingly, Porsche might be able to successfully argue that updated designs with small differences create a different overall impression on the informed user, when considering model cars.

[i] More precisely, Porsche is actually the Dr. Ing. h.c. F. Porsche AG.

[ii] The designs with registration numbers 000198387-0001 and 001230593-0001 can be found on the official register here and here, respectively.

[iii] The office administering Community designs is the European Union Intellectual Property Office, or EUIPO for short.

[iv] The decisions can be found here and here.

[v] In particular, the General Court in Shenzhen Taiden v OHIM, T-153/08, 22 June 2010

[vi] Ibid.

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