PepsiCo Inc v Grupo Promer Mon Graphic SA CJEU Judgment

20 October 2011

Matthijs Marell, Hilary Atherton

Today, the Court of Justice of the European Union (CJEU) has delivered a long awaited judgment on design rights. This case is the first substantive decision of the CJEU on Registered Community Designs (RCDs). The CJEU has provided a clear description of the ‘informed user’ and his level of attention. The CJEU has also clarified that the informed user’s imperfect recollection may be taken into account when assessing infringement, as well as a comparison of the actual products rather than merely the designs themselves.

Grupo Promer Mon Graphic SA (‘Promer’) owns the following RCD for metal plates for games:





PepsiCo Inc (‘PepsiCo’) subsequently registered the following RCD for promotional items for games:




Both designs related to so-called ‘pogs’, which are children’s toys often given away for free as promotional items. Promer requested a declaration of invalidity of PepsiCo’s RCD, based on the fact that the RCD conflicted with its own prior RCD. The Cancellation Division of OHIM declared PepsiCo’s RCD to be invalid, considering that the two designs produced the same overall impression on the informed user. PepsiCo appealed to the Board of Appeal (BoA). The BoA overruled the Cancellation Division’s decision, deciding that the two designs produced different overall impressions on the informed user.

Promer appealed the BoA’s decision to the General Court (GC), which largely upheld the BoA’sfindings, in particular that the appropriate category of goods for the purposes of ascertaining the freedom of the designer of the promotional items was ‘pogs’. However, the GC held that even within this narrow category and the consequent restriction on design freedom, the differences between the designs were insufficient to produce a different overall impression on the informed user. PepsiCo appealed to the CJEU.


PepsiCo relied on a single ground of appeal, alleging breach of Article 25(1)(d) of the Community Designs Regulation (6/2002) (the Regulation). The ground consisted of five parts. The first four parts concerned various errors that PepsiCo claimed the General Court has made in relation to (i) the constraints on the designer’s freedom, (ii) the concept of the informed user and his level of attention, (iii) the scope of the GC’s power of review, and (iv) whether it was acceptable for the GC to have compared the goods rather than the designs in issue. The fifth and final part of the ground of appeal concerned PepsiCo’s allegation that there had been a distortion of the facts by the GC.

Constraints on the designer’s freedom

PepsiCo argued that the similarities, observed by the GC, were all due to the functions of and were common to the products at issue, which resulted in a limitation of the designer’s freedom. According to PepsiCo the GC did not take these constraints into account in its assessment of the designs.

The AG had taken PepsiCo’s argument as a starting point to elaborate on the constraints on the designer’s freedom, opining that the only constraints on creative freedom to be taken into consideration were those dictated by the need for the goods to fulfill a certain function, rather than standard functions expected in the market.

However, the CJEU declined to enter into considerations as to constraints on the designer’s freedom and instead referred to settled case law which established that the GC has exclusive jurisdiction to find and appraise the facts. The appraisal of the facts could not be regarded as a point of law, and was not therefore subject to review by the CJEU.

Concept of the ‘informed user’ and his level of attention

PepsiCo also argued that the GC had applied incorrect criteria for its assessment of the different overall impression on the ‘informed user’. PepsiCo stated that the ‘informed user’ was neither the average consumer who is reasonably well informed and reasonably observant and circumspect, as defined by trade mark law, nor the end user of the goods.

The CJEU recognised that the Regulation does not define the concept of the ‘informed user’, and followed the AG’s opinion in finding that the concept must be understood as lying “somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise.”

Therefore the ‘informed user’ should be considered as a particularly observant user on account of his personal experience or his extensive knowledge of the sector. Because of this he will usually make a direct comparison between the designs at issue.  However, even if the GC had based its assessment on the informed user’s ‘imperfect recollection’, it would not have been mistaken in doing so. 

With regard to the level of attention of the ‘informed user’ the CJEU stated that the term ‘informed’ implies that the user, without being a designer or technical expert, knows the available designs in the sector and, because of his interest in the products concerned, shows a relatively high level of attention using these products.

Scope of review by the Courts

PepsiCo argued that the GC’s minute examination of the differences and similarities between the designs lay outside the scope of its task under Article 61(2) of the Regulation, and was rather to be undertaken solely by the BoA.

The CJEU observed that the GC has jurisdiction to carry out a full review of the legality of OHIM’s assessment. Although the GC may afford OHIM some latitude and restrict its review to an examination of only manifest errors of assessment, in this case the GC did not exceed its given task.

Comparison of the goods rather than of the designs at issue

PepsiCo claimed that the GC had erred in making an assessment of the designs by comparing the actual products rather than the designs at issue.

However, as the CJEU had already found that the ‘informed user’ differs from the average consumer, it was not mistaken – in the assessment of the overall impression of the designs – to take into account the actual products which corresponded to the designs.  As the GC had stated that its assessment of the designs was ‘borne out’ by the goods actually marketed, it had based its assessment on the designs and had used the comparison of the goods for mere illustrative purposes.

Distortion of facts

PepsiCo’s final argument was that there has been a distortion of the facts by the GC in assuming that the informed user would limit his perceptions of the device to the ‘view from above’, rather than also considering the designs in profile.  However, PepsiCo had failed to indicate precisely which evidence was distorted. It had therefore failed to satisfy the well-established requirement that any alleged distortion must be clear without necessitating a new assessment of the facts and evidence.


Design rights holders and alleged infringers now have valuable guidance on the how the CJEU will assess the strength of designs and the question of design infringement. This includes the definition provided by the Court of the ‘informed user’, his level of intention, and the Court’s clarification that goods themselves may be taken into account when assessing the overall impression.

However, the CJEU missed an opportunity to also clarify the concept of ‘constraints on the designer’s freedom’. Although the AG’s opinion was clear on this matter, it is still unclear whether standard features which are expected in the relevant market are also capable of limiting the designer’s freedom.