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The General Court of the European Union has handed down the first-ever ruling interpreting EU rules on the Community design(1). On 18 March(2), it annulled a decision dismissing an application for a declaration of invalidity against a design registered by PepsiCo in the form of a rapper' or pog', ie a small illustrated disc that can be collected or used for children's games.

In February 2004, Grupo Promer Mon Graphic, a Spanish marketing and promotion firm, submitted an application for a declaration of invalidity to the Community trade mark office (OHIM), which also manages the Community design, against a design registered by PepsiCo as "promotional items for games". The company invoked the existence of a prior right, a Community design for "metal plates for games," filed on 17 July 2003, in support of its request. The OHMI dismissed the application, holding that the goods covered by the designs at issue concerned a particular category of promotional items, namely rappers' or tazos' (the Spanish name), and that the freedom of the designer of those promotional items was therefore "severely restricted". The Board of Appeal concluded that the difference in the profiles of the designs at issue was sufficient to conclude that they produced a different overall impression on the informed user. Grupo Promer Mon Graphic asked the court to annul that decision and the court ruled in its favour.

The EU court found first that the OHIM was right to consider that the product in question belonged, within the broad category of promotional items for games, to the particular category of game pieces known as pogs', rappers' or tazos' and that the designer's freedom was severely restricted by the fact that it had to incorporate the common features of rappers in its design and that the items had to be inexpensive and safe for children.

On the other hand, it ruled that the OHIM erred in finding that the two designs produce a different overall impression on the informed user and that some of the similarities between the two designs were not the result of a restriction of the designer's freedom. The court noted that the central part did not have to be delineated by a circle; this could also have been done by a triangle, a hexagon or an oval. In addition, the designs are similar in that the rounded edge of the disc is raised in relation to the intermediate area of the disc between the edge and the raised central area, and the respective dimensions of the raised central part and the intermediate area of the disc, between the edge and the raised central part, are also similar.

Consequently, the court annulled the OHIM's decision to dismiss the application for a declaration of invalidity. An appeal, limited to points of law only, may be brought before the Court of Justice against the decision of the General Court within two months of notification of the decision.

To view the two designs, click here

(1) Directive 98/71/EC of the European Parliament and Council, of 13 October 1998, on the legal protection of designs

(2) Case T 9/07

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Publication:European Report
Date:Mar 29, 2010

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