OPINION OF ADVOCATE GENERAL

MENGOZZI

delivered on 12 May 2011 (1)

Case C‑281/10 P

PepsiCo, Inc.

(Appeal – Community designs – Scope of the review of the legality of OHIM decisions relating to designs – The degree of freedom of the designer – Concept of ‘informed user’)

1.        This is the first case in which the Court is called upon to give a ruling on Regulation No 6/2002 (2) in the context of an appeal against a judgment handed down by the General Court. (3) Beyond the practical matter of determining how the dispute should be resolved, this case offers the first opportunity to clarify a number of points which are crucial for the purposes of defining the limits and conditions attaching to review by the European Union judicature of decisions taken by the Office for Harmonisation in the Internal Market (‘OHIM’) in relation to Community designs.

I –  Legislative context

2.        Regulation No 6/2002 (also ‘the Regulation’) was the product of a lengthy and tortuous legislative process, which need not be summarised here but which actually dates back to the late 1950s. (4) Article 3 of the Regulation defines ‘design’ (5) as ‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation’.

3.        Article 4 of the Regulation, which is entitled ‘Requirements for protection’, provides:

‘1.      A design shall be protected by a Community design to the extent that it is new and has individual character.

...’

4.        Articles 5 and 6 of the Regulation define the two criteria specified in Article 4: the novelty of the design and its individual character.

5.        Article 5, which is entitled ‘Novelty’, provides:

‘1.      A design shall be considered to be new if no identical design has been made available to the public:

(a)      in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public;

(b)      in the case of a registered Community design, before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority.

2.      Designs shall be deemed to be identical if their features differ only in immaterial details’.

6.        Article 6, which is entitled ‘Individual character’, provides:

‘1.      A design shall be 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:

(a)      in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public;

(b)      in the case of a registered Community design, before the date of filing the application for registration or, if a priority is claimed, the date of priority.

2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration’.

7.        Reference to the ‘overall impression’ produced by the design and to the designer’s ‘degree of freedom’ are to be found, not only in Article 6 of the Regulation, but also in Article 10, which is entitled ‘Scope of protection’ and provides as follows:

‘1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.

2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration’.

8.        In the version applicable at the material time, Article 25 of the Regulation, concerning ‘Grounds for invalidity’, provided:

‘1.      A Community design may be declared invalid only in the following cases:

(a)      if the design does not correspond to the definition under Article 3(a);

(b)      if it does not fulfil the requirements of Articles 4 to 9;

(c)      if, by virtue of a court decision, the right holder is not entitled to the Community design under Article 14;

(d)      if the Community design is in conflict with a prior design which has been made available to the public after the date of filing of the application or, if a priority is claimed, the date of priority of the Community design, and which is protected from a date prior to the said date by a registered Community design or an application for such a design, or by a registered design right of a Member State, or by an application for such a right;

...’

9.        Review of the legality of OHIM decisions relating to designs is provided for in Article 61 of the Regulation, which is entitled ‘Actions before the Court of Justice’ and states:

‘1.      Actions may be brought before the Court of Justice against decisions of the Boards of Appeal on appeals.

2.       The action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power.

3.      The Court of Justice has jurisdiction to annul or to alter the contested decision.

...’

II –  Facts and procedure before OHIM

10.      On 17 July 2003, Grupo Promer Mon-Graphic SA (‘Promer’) filed an application with OHIM for registration of a Community design in respect of goods described as ‘metal plate[s] for games’. (6) The design was registered under No 53186-01. The design is represented as follows:

11.      In the application, priority was claimed for Spanish design No 157098, for which the application for registration had been filed on 8 July 2003.

12.      On 9 September 2003, PepsiCo Inc. (‘PepsiCo’) filed an application with OHIM for registration of a design in respect of goods identified as ‘promotional items for games’. In relation to that application also, priority was claimed for a Spanish design – No 157156 – for which the application for registration had been filed on 23 July 2003. That design is represented as follows:

13.      Both designs relate to small collectable children’s toys which are often distributed as free gifts inside the packaging of other products and known as ‘pogs’ (in Spanish, generally called tazos).

14.      On 4 February 2004, Promer filed an application with the Cancellation Division of OHIM, pursuant to Article 25(1)(d) of the Regulation, for a declaration of invalidity in respect of the design registered by PepsiCo, claiming a conflict with its own prior design. By decision of 20 June 2005, the Cancellation Division upheld the application and accordingly declared the design registered by PepsiCo to be invalid. According to the Cancellation Division, the two designs at issue bear similarities likely to produce the same overall impression on the informed user.

15.      PepsiCo successfully appealed against the decision of the Cancellation Division before the Board of Appeal. The Board of Appeal noted, in particular, that, in assessing the overall impression conveyed by the designs at issue, it is necessary under the Regulation to take account of the degree of freedom available to the designer in developing the design. The Cancellation Division had taken the view that, in the case before it, the degree of freedom had been very extensive, because it had taken as a reference for comparison the entire range of possible promotional items, of which there are clearly a very great number. According to the Board of Appeal, on the other hand, reference should be made in the present case to the more limited category of ‘pogs’ (or tazos); consequently, since features such as the circular shape are ‘a must’ for such products, being a standard feature, the degree of freedom actually available to the designer is far more restricted than that taken into account by the Cancellation Division. In the light of those considerations, the Board of Appeal found that the – albeit limited – differences between the two designs at issue were sufficient to rule out the possibility that the designs would produce the same overall impression on an informed user. The Board of Appeal therefore annulled the decision of the Cancellation Division and confirmed the validity of the designed registered by PepsiCo.

III –  The judgment under appeal

16.      Promer brought an action against the decision of the Board of Appeal before the General Court, which handed down its ruling by judgment of 18 March 2010 in Case T-9/07 Grupo Promer Mon Graphic v OHIM – PepsiCo (the ‘judgment under appeal’). (7)

17.      In the judgment under appeal, the General Court largely upheld the legal assessments made by the Board of Appeal. In particular, it confirmed that the concept of ‘conflict’ between designs, for the purposes of Article 25 of the Regulation, implies that the designs produce the same overall impression on the informed user. (8) It also confirmed that, for the purposes of ascertaining the designer’s degree of freedom, reference should be made, not to the entire category of promotional items, but to the particular category of ‘pogs’, (9) with the result that the actual freedom of the designer is somewhat constrained.

18.      According to the General Court, however, even within the restricted confines of the creative scope available to the designer for developing new designs for ‘pogs’, it would have been possible for the design registered by PepsiCo to achieve a greater degree of distinctiveness as compared with the design registered by Promer. Specifically, in paragraphs 79 to 81 of the judgment under appeal, the General Court stated as follows (emphasis added):

‘79      ... the designs at issue both contain a concentric circle approximately one third of the way from the edge to the centre. At paragraph 22 of the contested decision, the Board of Appeal noted that similarity, stating that the circle was intended to convey the idea that the central part of the disc is raised slightly. However, the Court finds that the central part could have been delineated by a shape other than a circle. For it is apparent from the application for registration of the contested design, included in OHIM’s file forwarded to the Court, that the contested design claims the priority of a Spanish design No 157156 which comprises three variants, and that the raised central part is, depending on the variant, delineated by a circle, a triangle or a hexagon. In addition, that finding cannot be called into question by the argument put forward by OHIM, at the hearing, that the shape had to be elementary in order not to distort the image which may cover the disc, since a triangular, hexagonal, or even a square or oval shape instead of a circular one would not have distorted the image any more. Furthermore, that finding cannot be called into question by OHIM’s argument that a circle had to be used so that the raised central part might be curved, because, inter alia, an oval shape could have been used.

80      ... the designs at issue 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.

81      ... the respective dimensions of the raised central part and the intermediate area of the disc, between the edge and the raised central part, are similar in the designs at issue’.

19.      On the basis of the above findings, the General Court held the differences between the designs at issue to be insufficient to produce a different overall impression on the informed user (10) and accordingly annulled the decision of the Board of Appeal.

IV –  Proceedings before the Court of Justice and forms of order sought

20.      The present appeal was lodged at the Court Registry on 4 June 2010. By its appeal, the appellant – PepsiCo – claims that the Court should:

–        set aside the judgment under appeal;

–        give final judgment on the dispute by rejecting the order sought at first instance or, in the alternative, remit the case to the General Court;

–        order Promer, the applicant at first instance, to pay the costs.

21.      Promer contends that the Court should:

–        dismiss the appeal;

–        order PepsiCo to pay the costs.

22.      OHIM has intervened in support of PepsiCo and contends that the appeal should be upheld.

23.      The parties presented oral argument at the hearing on 10 March 2011.

V –  The appeal

24.      PepsiCo relies on a single ground of appeal divided into five parts, each of which I shall now consider in turn.

A –    The first part of the single ground of appeal, concerning the constraints on the designer’s degree of freedom

1.      Arguments of the parties

25.      By the first part of the ground of appeal, PepsiCo claims that the General Court incorrectly applied the principle according to which it is necessary, when comparing two designs at issue, to take account of any constraints on the designer’s creative freedom. In particular, although the General Court correctly pointed out that, in this case, those constraints were rather severe, and the designer’s freedom curtailed, it went on to consider – as similarities capable of rendering the two designs excessively similar – features which are characteristic of all ‘pogs’ and which, PepsiCo argues, could not have been different. According to PepsiCo, those features consisted in the circular shape of the central part, the raised border and the respective proportions of the central and intermediate parts of the disc: three features which are characteristic of all items in the reference category and which the very function of the goods renders essential. Moreover, the central part has to be circular to enable ‘pogs’ to emit a sound when pressed with a finger. (11)

26.      OHIM shares PepsiCo’s view, albeit slightly altered by some nuances. In particular, according to OHIM, although not essential from a functional perspective, the circular shape of the central part is a requisite of the market, on which it is universally used for this type of product. It therefore represents a constraint on the designer’s degree of freedom.

27.      For its part, Promer asks the Court to reject PepsiCo’s arguments, contending that they are really designed to call into question the findings made by the General Court as to the facts.

2.      Analysis

28.      The first part of the ground of appeal concerns one of the crucial aspects of the Community rules on designs, namely the role which must be accorded to the freedom which the designer is actually able to enjoy in terms of creativity. As we saw when setting out the legislative context, the Regulation refers to the constraints on creative freedom both in Article 6, in relation to the individual character of the design, and in Article 10, in relation to the scope of protection: in both cases, the Regulation states that ‘the degree of freedom of the designer in developing the design shall be taken into consideration’.

29.      The need to take account of the designer’s creative freedom arises because some features of the product to which the design relates are, so to speak, ‘compulsory’: as a result, the designer is not free to change them, and the fact that they bear similarities to the features of another design cannot be regarded as significant. To give an example, the fact that two kitchen table designs both envisage a table with four legs will not usually be a significant factor, because the fact of having four legs is a feature of the vast majority of standard kitchen tables. Where designs are characterised by significant constraints on the designer’s creative freedom, small differences may, generally, be sufficient to produce a different overall impression.

30.      A point which requires clarification, and which is not resolved in the Regulation, concerns the type of constraint on the designer’s degree of freedom which needs to be taken into consideration. As we saw when setting out the arguments of the parties, there are, in essence, two possible approaches. One possible view is that the sole constraints to be taken into account are those of a strictly functional nature: that is to say, the features which the goods to which the design relates must possess if they are to fulfil their function. That idea is implicitly espoused by the General Court, and is not disputed by PepsiCo, which has based its own arguments on that view. According to OHIM, however, it is also necessary to take into account those design features which, although not essential from a functional perspective, are essential in so far as the market expects the goods to have them: in the present case, such a feature would be the circular shape of the central part of ‘pogs’. (12) Consequently, according to OHIM, that kind of constraint, too, must be taken into consideration.

31.      Given that the General Court’s interpretation of constraints on the designer’s degree of freedom is not a matter of dispute, it is not essential for the Court to rule on that point. I would nevertheless point out that, in my view, the interpretation which should be accepted is that which hinges on function, which the General Court adopted in the judgment under appeal. In other words, the constraints on creative freedom to be taken into consideration in accordance with the Regulation are exclusively those constraints which are dictated by the need for the goods to fulfil a certain function: in the case of ‘pogs’, for instance, the fact that they do not have sharp edges that could be dangerous for children.

32.      On the other hand, any ‘standard’ features which the market expects, but which are not technically necessary, cannot be regarded as constraints on the designer’s freedom. This is because of the purpose of the rules on designs. Those rules are, in fact, basically intended to reward the developers of innovative goods, by providing them with a system of protection. It is totally at odds with that aim to accept that mere market expectation can justify compulsory standardisation, certain features of a design being considered mandatory.

33.      The considerations set out in the preceding point are borne out by the travaux préparatoires, although, according to the established case-law of the Court, (13) conclusive inferences cannot be drawn from that source. In the Commission’s original proposal for a regulation, presented on 3 December 1993, (14) the comments on Article 11 – which corresponds to the current Article 10 – state ‘[h]ighly functional designs where the designer must respect given parameters are likely to be more similar than designs in respect of which the designer enjoys total freedom. Therefore, paragraph 2 also establishes the principle that the freedom of the designer must be taken into consideration when the similarity between an earlier and a later design is being assessed’ (emphasis added). The reference is, as we see, to functional designs, and the other language versions of the proposal have the same connotation. (15)

34.      That said, the fact remains that the assessment of the constraints on the designer’s degree of freedom in each specific case is, as is clear, a finding of fact, with which the Court of Justice cannot concern itself in the context of an appeal against a judgment of the General Court, save in the case of distortion.

35.      In the present case, it seems to me to be undeniable that the arguments adduced by PepsiCo are designed solely to call into question the findings of fact made by the General Court. In essence, what PepsiCo is claiming is that the General Court erred in regarding as capable of being modified by the designer certain aspects of the design which, according to PepsiCo, are mandatory and cannot be modified. Clearly, however, the assessment in the case of a specific design of the aspects which are outside the ambit of the designer’s creative freedom is an assessment of fact, in relation to which the Court of Justice cannot, therefore, call into question the findings made by the General Court. The General Court found that it is possible for ‘pogs’ to retain their individuality even if, in particular, their central part were triangular, hexagonal or oval rather than circular, and it is not for the Court of Justice to reconsider that assessment.

36.      I therefore consider that the first part of the single ground of appeal must be regarded as inadmissible.

B –    The second part of the single ground of appeal, concerning the concept of ‘informed user’

1.      Arguments of the parties

37.      According to PepsiCo, the General Court took, as the relevant public for the purposes of assessing the effect of the designs at issue, not the ‘informed user’ as provided under the Regulation, but the ‘average consumer’ who has to be used as the reference for the purposes of applying the Community trade mark regulation. According to PepsiCo, this emerges particularly clearly from paragraphs 82 and 83 of the judgment under appeal (emphasis added):

‘82      In the absence of any specific constraint imposed on the designer, the similarities ... relate to elements in respect of which the designer was free to develop the contested design. It follows that those similarities will attract the informed user’s attention, all the more so because, as the intervener itself stated, the upper surfaces are, in the present case, the most visible surfaces for that user.

83      ... However, it must be found that since the degree of curvature is slight, and the discs are thin, that curvature will not be easily perceived by the informed user, in particular when viewed from above, and this is borne out by the goods actually marketed, as contained in OHIM’s file forwarded to the Court.’

38.      According to PepsiCo, even though the General Court mentioned the informed user, not the average consumer, in reality it used the latter as the point of reference. This, according to PepsiCo, is illustrated particularly by the italicised wording in the two paragraphs quoted above: through its use of that wording, the General Court reveals that it did not take account of the fact that the informed user is less ‘superficial’ than the average consumer. Because of that fact, in PepsiCo’s view, it is simplistic to take into account only the most easily visible aspects of the goods (in paragraph 82) and the easily perceptible differences between the designs at issue (in paragraph 83). On the contrary, the informed user would be perfectly capable of perceiving even differences which are faint and which relate to parts of the goods characterised by the designs at issue which are not immediately visible.

39.      OHIM concurs with PepsiCo’s arguments and adds that the General Court incorrectly took the approach of a consumer who recollects the designs at issue rather than a consumer who compares them directly. A comparison based on recollection is typical in the case of trade marks, but in the case of designs it is necessary to think in terms of a direct comparison between the goods characterised by the designs at issue.

2.      Analysis

40.      In my view, the second part of the single ground of appeal is partly inadmissible and partly unfounded.

41.      First, the General Court correctly took as the relevant public not the ‘average consumer’ but the ‘informed user’, as the Regulation requires. That is specifically stated in the judgment under appeal, and there is no evidence to show that that was not so.

42.      The problem is that, as is well known, the Regulation does not define the term ‘informed user’: the result is that, since there have been no judicial decisions as yet which elucidate that concept, a number of uncertainties can still arise.

43.      Obviously, the informed user to whom the Regulation refers is not the average consumer to whom reference must be made in order to apply the rules on trade marks, who needs to have no specific knowledge and who, as a rule, makes no direct comparison between the trade marks at issue; nor, however, is the informed user the sectoral expert referred to for the purposes of assessing a patent’s inventiveness. The informed user can be said to lie somewhere between the two. Accordingly, 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.

44.      Perusal of the travaux préparatoires for the Regulation confirms that definition as lying somewhere ‘between the two’. In particular, in its comment on Article 6(1) of the original proposal, (16) the Commission stated the following:

‘The person on whom an overall impression of dissimilarity must be made is an “informed user”. This may be, but is not necessarily, the end consumer who may be totally unaware of the appearance of the product, for example if it is an internal part of a machine or a mechanical device replaced in the course of a repair. In such cases the “informed user” is the person replacing the part. A certain level of knowledge or design awareness is presupposed depending on the character of the design. But the term “informed user” should indicate also that the similarity is not to be assessed at the level of “design experts”’.

45.      In that regard, the General Court correctly identified the informed user to serve as the point of reference for assessing the designs at issue in the present case. And it is worth emphasising that the General Court did so by adopting the identification made by the Board of Appeal, according to which the informed user of ‘pogs’ could be a child in the age range of between 5 and 10 the final consumer of the goods) or a ‘marketing manager in a company that makes goods which are promoted by giving away “pogs” … or “tazos”’. (17) The General Court enlarged on this point, stating that ‘[t]he informed user is particularly observant and has some awareness of the state of the prior art, that is to say, the previous designs relating to the product in question that had been disclosed on the date of filing of the contested design, or, as the case may be, on the date of the priority claimed’. (18)

46.      The General Court’s findings regarding the nature and characteristics of the informed user in relation to designs are accordingly correct, since that user is properly distinguished and defined, both as compared with a general consumer and as compared with an expert in the sector. In my view, the very fact that, in the present case, the General Court accepted a dual notion of the informed user – covering both the child-final consumer and the marketing manager in a company that may have an interest in using ‘pogs’ for promotional purposes – confirms that it followed the correct line of legal reasoning and made a careful assessment.

47.      In so far as it concerns the correct identification of the ‘informed user’, therefore, the single ground of appeal should be rejected as unfounded.

48.      Just as the General Court made no errors in identifying the relevant public, its findings concerning the type of comparison which the informed user may make between the designs at issue are not open to criticism.

49.      I would first observe – as does OHIM, moreover – that the Regulation is silent on this point. Accordingly, the comparison could, in principle, be either an indirect comparison, based on recollection, as generally happens in the field of trade marks, (19) or a direct comparison made by viewing the goods side by side.

50.      In my view, both types of comparison are a legitimate possibility in the case of designs, and to require the systematic use of only one of them would unreasonably restrict OHIM’s powers and, in consequence, the actual protection accorded to the designs, and, in addition, would force the Regulation to say something which it does not actually say.

51.      It must in fact be pointed out that, while it is doubtless possible in many cases for an informed user to make a direct comparison of the goods characterised by the designs at issue, it cannot be ruled out that in some situations this is, on the contrary, impracticable. I am thinking here, for example, of designs relating to goods which – because of their large size or because they have to be placed far apart – can never, generally speaking, be set alongside one another: an informed user will not always be in a position to make a direct comparison of, for instance, two boats or two large items of industrial equipment. In such circumstances, the informed user will perhaps have adequate documentation to make the comparison, but will seldom be able to make a ‘live’ comparison, and some time may elapse between that user’s assessment of one design and then the other.

52.      The type of comparison which the informed user is able to make between two designs must not, therefore, be rigidly defined in advance; it will in fact need to be assessed case by case, on the basis of the circumstances and the features of the goods characterised by the designs at issue. The very nature of the informed user means that, when possible, he will make a direct comparison between the goods; however, in cases where that is impossible or not very realistic, it will be necessary to envisage a comparison which, although not based exclusively on vague recollection, as in the field of trade marks, may none the less be made over a period of time and at different locations, so far as is required in the specific case.

53.      In the present case, there appears to be no doubt that it was possible to make a direct comparison of the ‘pogs’, as they are small products which are widely distributed. All the same, I would point out that, contrary to the assertions made by PepsiCo and OHIM, the judgment under appeal reveals no error of law on the part of the General Court in that regard.

54.      Contrary to what is suggested by OHIM in particular, the General Court did not envisage a situation in which the relevant public compared the goods on the basis of their recollection of the impression those goods conveyed. Quite the reverse, as paragraphs 82 and 83 of the judgment under appeal (quoted above) demonstrate, the General Court’s reasoning focused on the aspects capable of attracting ‘the informed user’s attention’.

55.      Lastly, the use – in paragraph 77 of the judgment under appeal – of the words ‘that similarity would not be remembered by the informed user in the overall impression of the designs at issue’ is without significance. Aside from the fact that the General Court endorsed PepsiCo’s position by stating that certain aspects characteristic of the designs at issue need not be taken into consideration, since they are typical of all goods in that category, it should be pointed out that, in making that statement, the General Court summarised and confirmed the reasoning of the Board of Appeal. Moreover, the use of the words ‘would not be remembered’ – albeit a little infelicitous, perhaps – does not necessarily imply the idea that the comparison between the designs must be made on the basis of the ‘memory’ with which they leave the public. Reading those words in the context of the judgment actually demonstrates that, on the contrary, the General Court’s reasoning is based on identifying those aspects capable of attracting the informed user’s attention. Moreover, some language versions of the judgment under appeal actually contain, alongside or in place of the idea of ‘remembering’, the concept of ‘perceiving’ the similarities. (20)

56.      It follows that, in that respect also, the reasoning of the General Court is correct, and PepsiCo’s arguments must be rejected.

57.      Lastly, as regards the informed user’s specific perception of the designs, once that user has been properly identified and the manner of the comparison defined, I would point out that the assessments made by the General Court fall fully within its own jurisdiction to assess the facts, in respect of which it is not for the Court of Justice to make a ruling. The ground of appeal is therefore inadmissible in so far as it challenges the General Court’s assessments in that regard.

58.      In conclusion, I therefore consider that the second part of the single ground of appeal should also be rejected.

C –    The third part of the single ground of appeal, concerning the attention level of the informed user and the scope of review by the European Union judicature

1.      Arguments of the parties

59.      By the third part of the ground of appeal, PepsiCo makes two separate complaints which must be considered individually.

60.      PepsiCo claims first that, when determining the overall impression made on the informed user, the General Court erred in law by confining itself to an examination of those features of the designs at issue which that user would have easily perceived. According to PepsiCo, this emerges from paragraph 83 of the judgment under appeal in particular, according to which ‘it must be found that since the degree of curvature is slight, and the discs are thin, that curvature will not be easily perceived by the informed user, in particular when viewed from above’ (emphasis added).

61.      PepsiCo argues that an informed user who observes the designs at issue will not confine himself to a superficial examination as envisaged by the General Court, but will undertake a much more detailed analysis. The judgment under appeal therefore contains an error of law, because the wrong criteria for comparing the designs were applied.

62.      Secondly, PepsiCo claims that the General Court erred in law as regards the scope of the review which it has jurisdiction to undertake of decisions of the Board of Appeal concerning designs. Given the technical nature of designs, the General Court’s review should be confined to establishing that the Board of Appeal has not made manifest errors. By contrast, in the present case, according to PepsiCo, the General Court substituted its own view for the assessment of the OHIM bodies.

63.      OHIM concurs with PepsiCo’s arguments, particularly in relation to the scope of review by the European Union judicature.

2.      Analysis

64.      In my view, this part of the ground of appeal, like the previous part, is partly inadmissible and partly unfounded.

a)      The attention level of the informed user

65.      PepsiCo’s argument is, in the first place, inadmissible in so far as, although alleging that there has been an error of law, PepsiCo is really seeking to call into question the findings of fact made by the General Court regarding the way in which the informed user perceives the two designs at issue. As I pointed out above, there is no doubt that the General Court correctly defined the informed user and, in accordance with the Regulation, took such a user as the reference person for the purposes of assessing the designs. As regards the way in which, in the specific case, the informed user perceives the designs, and the impression that user gleans from them, that is a matter for the General Court alone to decide, as it is simply a question of fact. PepsiCo has failed to demonstrate that the General Court applied the wrong legal criteria.

66.      Nor is it relevant that, in paragraph 83 of the judgment under appeal, the words ‘easily perceived’ are used with reference to the relationship between the informed user and a design. Notwithstanding PepsiCo’s arguments, that does not imply that the General Court envisaged a superficial and not particularly attentive user. It should be borne in mind that the informed user is not the same as the sectoral expert who is called upon in the field of patents. Nor, certainly, is that user the average ‘inattentive’ consumer to whom reference may be had in relation to trade marks: but, depending on the circumstances, there is no reason not to suppose that even the powers of observation of the informed user have their limitations and do not extend to carrying out a detailed and specialist appraisal. It should also be borne in mind that, in the present case, the goods characterised by the designs at issue are small toys intended for children aged between 5 and 10 and distributed free of charge, as free gifts, inside other goods. Generally speaking, even careful observation of such goods will not extend beyond a certain level of examination and detail.

67.      It should also be pointed out that the words quoted from paragraph 83 of the judgment under appeal need to be considered in context and not as an isolated statement. In that regard, the considerations which I have set out above, when discussing the second part of the ground of appeal, indicate that the General Court envisaged an informed user who was anything but superficial and inattentive, even if lacking the analytical acumen which, if anything, is the hallmark of an observer of patents.

b)      The scope of the review of legality

68.      The third part of the single ground of appeal must be regarded as unfounded in so far as it calls into question the scope of the review which the European Union judicature may undertake of the legality of decisions of the Board of Appeal relating to designs.

69.      As we have seen, PepsiCo and OHIM suggest that the European Union judicature must confine its review to establishing the absence of manifest errors, thereby essentially adopting the approach of settled case-law in cases in which the legality of decisions which are highly technical or specialist in substance have to be considered. (21)

70.      In my view, however, there is no reason to adopt, in relation to designs, an approach which is different from that adopted for trade marks.

71.      I would first point out, in that regard, that the provision of the regulation on review by the European Union judicature – namely, Article 61 – is, in substance, identical to the provision laid down in the trade mark regulation, (22) which, in turn, refers to the Treaty provisions (currently Article 263 TFEU) on actions for annulment: the content of those provisions does not, therefore, allow them to be construed differently and an approach to be adopted, in relation to designs, which is different from that generally adopted in relation to trade marks. Moreover, as in the field of trade marks also, Article 61 of the Regulation acknowledges that the European Union judicature has jurisdiction not only to annul contested decisions, but also to vary them: that seems difficult to reconcile with the idea that the review of the legality of such decisions is ‘limited’.

72.      Secondly, the assessment of designs, as of trade marks, is a matter for OHIM, and not for some other organisation with more specific technical expertise.

73.      Thirdly, it should be pointed out that, for the purposes of assessing whether there is any possibility of conflict between two designs, the protection of designs under the Regulation takes into account only the visual impression which the designs produce on the informed user, as the General Court convincingly demonstrated, without being challenged on that point, in paragraph 50 of the judgment under appeal. The fact is that, although a degree of experience on the part of the observer may be beneficial, a visual comparison does not, as a rule, require any specific skill or technical ability.

74.      The only element which could be employed to argue for a more limited review of legality in relation to designs, as compared with trade marks, could be the fact that – as extensively discussed above – the point of reference is the informed user rather than the average consumer. But that difference is not sufficient to justify a difference in the scope of review jurisdiction. This is because, generally speaking, 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.

75.      It is quite possible, of course, to envisage, in more general and abstract terms, an approach on the part of the European Union judicature whereby, in relation to OHIM decisions, it confines its intervention to something more restricted than at present, and does not merely rule out substituting its own assessments for that of OHIM, (23) but, more generally, attributes to all OHIM decisions the kind of ‘technical’ nature which restricts the scope of the review of legality. However, that kind of change of approach should encompass all of OHIM decisions, including decisions on trade marks, and could not, as we have seen, be limited solely to designs. It is clear, therefore, that this is not the place to change current practice in that manner.

76.      In conclusion, therefore, the General Court did not, in determining the scope of its jurisdiction to review the Board of Appeal’s decision, err in law.

77.      The third part of the single ground of appeal must, therefore, be rejected also.

D –    The fourth part of the single ground of appeal, alleging that the review focused on the goods rather than on the designs at issue

1.      Arguments of the parties

78.      PepsiCo claims that the General Court erred in law by basing its assessments of the similarity between the two designs at issue on a physical examination of the goods characterised by the designs (the ‘pogs’), instead of simply comparing the designs as represented in the respective applications for registration.

79.      In that connection, it is necessary to draw attention, more specifically, to paragraph 83 of the judgment under appeal, in which the General Court stated that ‘it must be found that since the degree of curvature is slight, and the discs are thin, that curvature will not be easily perceived by the informed user, in particular when viewed from above, and this is borne out by the goods actually marketed, as contained in OHIM’s file forwarded to the Court’ (emphasis added).

80.      According to PepsiCo, if the General Court had taken account not of the actual products included by way of illustration in the case-file but of the graphic representation of the two designs at issue, the differences between them would have been quite obvious.

2.      Analysis

81.      In my view, the fourth part of the single ground of appeal is inadmissible. By this argument, PepsiCo is really seeking, once again, to call into question the findings of fact made by the General Court regarding the way in which the informed user perceives the designs at issue.

82.      In any event, even if, for the sake of argument, that submission were regarded as designed solely to challenge the fact that the General Court decided not merely to compare the graphic representations, but to take account also of the physical goods characterised by the designs at issue, Pepsico’s position is unsound. It should be pointed out that the General Court based its assessments of the designs at issue as described and reproduced in the respective applications for registration. The comparison of the actual goods was used only to confirm the findings already made, as is absolutely clear from the extract from paragraph 83 of the judgment under appeal quoted above.

83.      In any event, it seems to me that it is entirely proper – if, as in this case, it is physically possible – to take account of the actual goods characterised by a specific design. As we have in fact seen, the relevant public for assessing designs is made up of informed users, who are not experts, but simply individuals who are particularly interested in and attentive to such goods. In the present case, the informed users include children aged between 5 and 10 years. In those circumstances, it is quite right that the General Court should also have considered the goods in the form of the ‘real thing’, as seen and perceived by the informed users, who, it should be pointed out, do not usually ever see the registrations of the designs, but only their ‘practical application’, that is to say, the goods characterised by those designs. At the hearing, PepsiCo itself considered it appropriate to show the Court of Justice a number of ‘pogs’ to clarify some of the points contained in its observations.

E –    The fifth part of the single ground of appeal, alleging distortion of the facts

1.      Arguments of the parties

84.      By the last part of its ground of appeal, PepsiCo claims that the General Court distorted the facts, thus giving rise, in consequence, to the circumstances in which, exceptionally, the Court of Justice may reconsider the General Court’s findings as to the facts.

85.      According to PepsiCo, the distortion of the facts is apparent from all of its other observations and is confirmed by the decision of the General Court to confine itself to considering the designs at issue as viewed from above, neglecting adequately to consider their other profiles, particularly the side view.

2.      Analysis

86.      The complaint concerning a distortion of the facts is unfounded.

87.      For one thing, as we have seen in the preceding points, the General Court made a thorough and comprehensive examination of the designs at issue, taking account of the way in which they are perceived by an informed user, as required under the Regulation.

88.      Furthermore, far from being borne out, PepsiCo’s assertion that there has been a distortion of the facts seems to be the final argument in its ‘summing up’, designed yet again to challenge the findings of fact by the General Court with which it does not agree. However, it should be pointed out that, given the exceptional nature of a complaint that there has been a distortion of the facts, that complaint must be underpinned by particularly solid evidence, by means of which an appellant must indicate precisely the evidence alleged to have been distorted and show the errors of appraisal which the General Court is alleged to have made. (24) The arguments advanced by PepsiCo in that regard fail totally to satisfy those requirements.

89.      Accordingly, the last part of the ground of appeal must also be rejected.

VI –  Conclusions

90.      In the light of the above considerations, I therefore propose that the Court should:

–        dismiss the appeal;

–        order PepsiCo to pay the costs.

---

1 – Original language: Italian.

---

2 – Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

---

3 – To be more specific, until now, with the exception of two infringement actions brought by the Commission against two Member States, the Court has had occasion to give a ruling on Regulation No 6/2002 solely in the context of a reference for a preliminary ruling, which resulted in the judgment of 2 July 2009 in Case C‑32/08 FEIA [2009] ECR I-5611.

---

4 – For a brief account of the legislative course which resulted in the approval of the Regulation, see points 3 to 5 of my Opinion in FEIA (cited in footnote 3).

---

5 – Footnote not relevant to the English-language version of the Opinion.

---

6 – In Spanish, the language in which the application was filed: ‘chapa metálica para juegos’.

---

7 – [2010] ECR II‑0000.

---

8 – Judgment under appeal, paragraph 52.

---

9 – Judgment under appeal, paragraph 60.

---

10 – Judgment under appeal, paragraph 84.

---

11 – It would appear from the case-file (see, for example, paragraph 9, sixth indent, and paragraph 20 of the decision of the Board of Appeal) that both the pogs characterised by the PepsiCo design and the pogs characterised by the Promer design have this ‘sound’ feature, which, although not always present, is frequently a feature of the ‘pogs’ on the market.

---

12 – I would, moreover, point out that, according to OHIM, the circular shape is necessary so that the ‘pogs’ can be stacked with the others already present on the market. The question may arise, however, as to whether that need – assuming that such a need exists (the General Court took the view that it does not), as opposed to being a simple market requirement, as OHIM maintains – is not actually of a functional nature, since its purpose is to make goods compatible with goods already being marketed.

---

13 – See, for example, Case C-375/98 Epson Europe [2000] ECR I-4243, paragraph 26; Joined Cases C-49/98, C-50/98, C-52/98 to C-54/98 and C-68/98 to C-71/98 Finalarte and Others [2001] ECR I-7831, paragraph 40; and Case C-164/99 Portugaia Construções [2002] ECR I-787, paragraph 27.

---

14 – COM(93) 342 final (OJ 1994 C 29, p. 20).

---

15 – See, for example, the French ‘des dessins ou modèles extrêmement fonctionnels pour lesquels le créateur doit respecter des paramètres précis’, the Italian ‘i disegni o modelli con spiccate caratteristiche funzionali nei quail il disegnatore debba osservare parametric precostituiti’and the German ‘hochfunktionelle Muster, bei denen der Entwerfer gegebene Parameter beachten muß’.

---

16 – See footnote 14 above.

---

17 – Judgment under appeal, paragraph 64.

---

18 – Judgment under appeal, paragraph 62.

---

19 – See Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 26.

---

20 – See, for example, the French version: ‘cette similitude ne sera pas retenue par l’utilisateur averti dans l’impression globale des dessins ou modèles en cause’; the German: ‘wird der informierte Benutzer diese Ähnlichkeit im Rahmen des Gesamteindrucks, den er von den fraglichen Geschmacksmustern gewinnt, nicht wahrnehmen’; the Spanish: ‘el usuario informado no apreciará tal semejanza en la impresión general de los dibujos o modelos controvertidos’; and the Dutch: ‘de geïnformeerde gebruiker, wat de door deze modellen gewekte algemene indruk betreft, niet op deze gelijkenis zal letten’ (emphasis added).

---

21 – The case-law on this point is clear. Examples include cases in which the contested decision contains complex economic assessments: see, for example, Case C‑290/07 P Commission v Scott [2010] ECR I-0000, paragraph 66 and the case-law cited. In the field of intellectual property rights, the Court has set out similar considerations in relation to plant varieties: see Case C-38/09 P Schräder v UCVV [2010] ECR I-0000, paragraph 77.

---

22 – Article 65 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version) (OJ 2009 L 78, p. 1), corresponding to Article 63 of the earlier Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1).

---

23 – See, already to that effect, Case C-214/05 P Rossi v OHIM [2006] ECR I-7057, paragraph 50.

---

24 – Joined Cases C-204/00 P, C-205/00 P, C-211/00 P, C-213/00 P, C-217/00 P and C‑219/00 P Aalborg Portland and Others v Commission [2004] ECR I-123, paragraph 50, and the Order of 16 December 2004 in Case C-222/03 P APOL and AIPO v Commission, paragraph 40.