Background

A cancellation action was filed with the EUIPO by the Nuremberg model construction company Autec against two designs of the 911 series by the car manufacturer Porsche. Autec essentially argued that the contested designs lacked both novelty and individual character, which would eventually prevent them from being capable of protection. Autec claimed that the design and layout of the newer model would not visibly differ from the Porsche 911 models which have been on the market since the original version of the 911 model from 1963. In particular, Autec referred to two designs already protected in 1996. The EUIPO’s Cancellation Division upheld Autec’s application and declared the contested designs invalid due to lack of individuality. The subsequent appeal filed by Porsche in 2016 was dismissed by the EUIPO’s Board of Appeal.

In the present proceedings before the General Court, Porsche sought annulment of the contested decision and dismissal of Autec’s application for annulment.

Decision

The GC confirmed the Board of Appeal’s decision in almost all regards and, in particular, denied the necessary individual character of the later 911 models. Contrary to Porsche’s view, it did not find that the Board of Appeal had infringed Art. 25 I lit b) in conjunction with Articles 5 and 6 of Regulation No. 6/2002 (according to which a design may only be declared null and void under the listed criteria). In its reasoning, the GC first defined the standard of the “informed user”, which is important for an assessment of the “individual character” of a design. After Porsche claimed in the main proceedings that the informed user pays a higher degree of attention in the area of “expensive luxury limousines or sports cars” and was therefore more likely to perceive minor changes of a design, the General Court countered this view by pointing out that the term refers to a fictitious person and cannot be redefined on a case-by-case basis for this or that design.

Moreover, the Court did not share Porsche’s view that the ‘iconic character’ of the 911 series restricts the developers’ freedom of design from the outset. The GC reasoned that the ‘iconic character’ would merely be a customer expectation and not a mandatory restriction on the design or the aesthetics. Finally, the GC concluded that the designs to be compared were so similar that the renewed elements were not sufficient to cause a different overall impression in the perception of the informed user.

Comment

The GC’s judgement is not convincing in all respects. On the one hand, it has to be stated that the more recent designs of the 911 model in question differ at least not insignificantly from their predecessors. In particular, the headlights of the models compared have changed considerably over the years: whereas the 1996 model still featured “perfectly” rounded or oval headlamps, the design that has now been attacked is characterised by an additional distinct bulge on the front headlamps, which gives them ‑ and thus the entire front section of the model ‑ a different character. Against this background, it would at least have been reasonable if the Court held that the design in question has a different overall impression. Moreover, the GC’s statements on the degree of freedom of the designer within the framework of Art. 5 and 6 of Regulation No. 6/2002 are not entirely beyond doubt. In this respect, the Court could indeed have regarded the “iconic character” of the 911 as a certain restriction for the developers. The Model 911 is characterized by the continuity of the world-famous design line of the original 911, which gets cautiously but recognizably developed over time. It remains to be seen whether the CJEU will confirm the GC’s ruling in this form if Porsche should challenge the decision.

Authored by Benedikt Luethge