05-12-2011

European Court clarifies ‘informed user’ test necessary to register a product design

The European Court of Justice has clarified how to identify an ‘informed user’ – the hypothetical user of a product whose impression of it compared to other products determines (among other things) whether it can be protected by registration as a registered design.

A design can only be registered as a Community Design if, among other things, the overall impression created by the design on an ‘informed user’ is different from the impression created on that same user by other designs. The same rule applies to registration of a design at the Intellectual Property Office in the UK.

In a dispute about the design of a playground game called ‘pogs’ the European Court of Justice ruled that an ‘informed user’ was someone who fell between:

  • an ‘average consumer of trade mark law’; and
  • a sectoral or design expert who would notice small differences between designs.

However, it also said that informed users were particularly observant, because of their personal experience or extensive knowledge of the relevant product. They were not technical experts but their interest in the products meant they knew the various designs and the features each normally included. It also meant they showed a ‘relatively high degree of attention’ when using them. How well someone knows the product is therefore important when deciding whether they are an informed user.

When comparing different designs the court said the informed user’s comparison would often be a ‘side-by-side’ comparison (for example, in relation to pogs), but did not have to be.

In relation to pogs, the court said examples of informed users would be children aged between five and ten, and marketing managers of products promoted by pogs.

Recommendation

Designers should ensure that they have identified likely ‘informed users’ of their and competing products and ensured that their designs produce a different overall impression on those users from any rival products.