With a judgement dated 6 June 2019 (T-209/18), the EU General Court upheld EUIPO’s decision that found the design of the well-known ‘Porsche 911’ to be invalid. The individual character and novelty of the EU design, in fact, had been questioned in 2014 by the company Autec AG, which had filed before EUIPO an application for the declaration of invalidity of the same design, on the basis of the previous EU designs registered for the same product in 2008 and 2007 (see below, figures 2 and 3). This claim had been granted and confirmed on appeal by EUIPO. The decision had therefore been appealed before the General Court by Porsche AG, which had claimed that the overall impression aroused in the relevant public by the disputed design was markedly different from the one evoked by the previous designs.

Fig. 1: disputed design

The design at issue was also found invalid by the General Court due to the absence of individual character and, as the lack of this requirement prevented any protection for the design, the General Court did not assess the lack of novelty. In particular, the Judge focused the decision on the individuation of the relevant public and the designer’s creative freedom, therefore comparing the overall impression aroused by the disputed design and the designs previously registered for the same product.

As to the first point, the General Court firstly recalled that the individual character of an EU design must be assessed with reference to the overall impression aroused in informed users who, although not technical experts, know the different designs existing in the sector and the related details and, due to their interest in the products concerned, have a fairly high degree of attention. Given that, the informed user must be identified according to the content of the design’s application for registration. Consequently, since in this case the registration concerned class 12.8 of the Locarno Classification (namely “cars, buses and trucks“), the ‘Porsche 911’ consumer had to be consistently identified as a consumer of the generic product “automobile”, and not instead – as claimed by the appellant – as a consumer of “sports cars” or “limousines”, with above-average knowledge and a higher attention than the one identified by EUIPO, as this specification did not find any match in the Locarno Classification.

As to the second point, the General Court clarified that the designer’s creative freedom – which must be taken into account by the Judge in the assessment of the design’s individual character – is always in some way limited by external factors, such as the product’s function or the applicable laws. Consequently, the more this freedom is limited, the more the small differences between models of the same car may be sufficient to arouse in the consumer a different overall impression. However, according to the applicant, the designer of ‘Porsche 911’ had to be considered further limited by the creative idea that had inspired the original model of the car, considered iconic by the relevant public and therefore unchanged in the subsequent models. Consequently, considering that the ‘Porsche 911’ designer could develop the car design only within certain limits, the appellant concluded that even subtle differences in the disputed model could comply with the individual character requirement. However, the General Court pointed out that market expectations concerning a specific product (and the consequential standard in its design, aimed at satisfying these expectations) cannot be considered a limiting factor, to the extent to which they are not related to the nature or function of the product, nor to the sector laws (e.g. vehicle safety laws).

Based on these considerations, the General Court carried out a comparison between the disputed design and those previously registered. According to Porsche AG, EUIPO had not taken into account the fact that the relevant customers were perfectly aware that, due to design costs, designers do not continuously create new car models, but rather modernise those already existing and appreciated by the public. On this premise, according to Porsche, there were clear differences between the different designs, such as for example the “protruding” front headlights, the fully reshaped door handles and the different position of the rear-view mirror. According to the Judge, however, although these differences could virtually strengthen the sense of a fresh design for some details, they were not able to modify the overall impression evoked by the previous designs, which had the same shape and silhouette. Consequently, the Court declared the invalidity of the disputed design.