The Spanish Supreme Court rules that the Judge may act as the informed user or “the eye of the beholder” to rule on the infringement of EU registered designs in the case of non-sophisticated designs and products.

On 16 October 2020 the Spanish Supreme Court rendered a decision regarding the infringement of a registered EU design of a griddle in a case between Electrodomésticos Jata S.A. (“Jata”) and Electrodomésticos Taurus S.L., (“Taurus”).

The Supreme Court endorses the decision of the Appeal Court of Alicante (acting as the Spanish Court of EU designs) considering that the overall impression produced by the Taurus challenged device on an informed user was identical to the one produced by the invoked EU design (RCD-000876.065-001).

The most striking part of this judgment is that the Supreme Court was requested to evaluate whether the court can itself be placed in the position of the informed user, and if this can be done where neither party have requested the court to do so as a means of the proof of judicial recognition test.

The Appeal Court of Alicante decided itself to conduct the physical comparison between the invoked EU design and the challenged Taurus griddle, as a result of deciding it would put itself in the position of the informed user. Taurus alleged before the Supreme Court that the Appeal Court of Alicante could not conduct such comparison because neither party had requested this as a means of proof of the judicial recognition test. In addition, the practice of such means of proof was carried out without the required procedural guarantees, and had therefore breached the defendant’s right of defence. The Supreme Court strongly refused this argument and explained that there was no judicial recognition test: the required assessment between the challenged product and the asserted registered design is similar to the comparison that courts carry out for trademark infringement cases. In this case it was to confirm whether the overall impression generated by the challenged product was different to the one generated by the invoked registered design. In the Supreme Court’s own words:

In general terms, in any industrial property proceeding in which it is necessary to make an assessment of infringement of an exclusive right due to acts involving a risk of confusion or association of an exclusive right due to acts involving a likelihood of confusion or association (comparison between trade marks, comparison of designs, drawings or models, etc.), the courts must necessarily carry out a perceptive and sensorial activity which also inevitably entails the examination of the objects in dispute, whether tangible or intangible but perceptible by the senses.

Thus, for example, in trade mark cases, the court must compare the conflicting distinctive signs in order to the word, graphic, visual, phonetic and conceptual identities or similarities of the goods or services to which they are applied and to be able to reach a final conclusion on the likelihood of confusion after considering all those elements as a whole (e.g. judgment of the Court of First Instance in Case 504/2017, of 15 September, and those cited therein).

In the field of design, since its protection is “intended to safeguard objects which, although new and individualised, have a practical character and are intended for mass production” ( CJEU of 12 September 2019, Case C-683/17, Cofemel, paragraph 50), the courts will have to confront the different objects or products at stake, sensorially, in relation to the protected design. In other words, in view of what is the object of protection, as the assessment is about the overall impression given by the formal appearance of those objects (in this case, the griddles), it is imperative that the court compares the different objects in relation to the protected design.

This sensory perception by the court of the configurating or distinctive elements of the trade marks or designs in conflict does not imply that it carries out a judicial recognition test (…) but rather it is a legal assessment based on the factual elements available to the court.

In addition, Taurus alleged that the Appeal Court of Alicante had completely disregarded the overall impression that the designs produced on informed users and that the court could not be placed in the position of the informed user. The Supreme Court explained that in the case of products whose examination do not require special technical knowledge, the court may be placed on the position of the informed user as “the eye of the beholder”, provided that the court makes the assessment following the overall impression criteria. In particular, in order to analyse the individual character, it refers to the need to identify features which are clearly discernible in the actual use of the goods to which the registered design is applied. It is then considered which of these do not create the same overall impression on the informed user as the appearance of the registered design, even on the basis of similarity of the two designs. In addition, the Supreme Court also takes into account the degree of freedom of the designer; the degree of freedom is shaped by the requirements of the characteristics imposed by the technical function of the product or of the design.

Based on that, the Supreme Court analysed the reasoning of the Appeal Court of Alicante and concluded that the application of the aforementioned criteria by the Appeal Court of Alicante in the case at stake was perfectly right – the relevant coincidences of the confronted designs led to the same overall impression and, thus, to the infringement of Jatas’s asserted registered design by the Taurus griddle.