The Court of Appeal of Alicante has determined the scope of the freedom of the designer of infant seats (high chairs) as well as the average knowledge of the informed user in relation to these products in a judgment of 21 November 2013 (Jané, S.A. v Innovaciones MS, S.L.). The case was initiated by Jané, S.A. as the owner of the Registered Community Design (RCD) no. 000686720-0001, with the following representation:

Jané filed a claim against Innovaciones MS, S.L. at the Community Design Court for the marketing of a high chair for children, which was also protected by the Spanish design no. 508343-01, with a filing date later than Jané’s RCD:

The claim was dismissed by a judgment dated 5 July 2013 where the Court made a comparative analysis between the RCD and the model marketed by the defendant. In particular, the judgment remarked that the way of insertion of the chairs in the base not only affected their functionality but also their aesthetic appearance. Additionally, it was found that, apart from the specific differences, the overall impression of Jané’s RCD showed a pre-eminence of concave and convex curves in comparison with the model of Innovaciones MS, so they did not create the same impression in the user.

Jané filed an appeal against the judgment to the Court of Appeal, arguing that the RCD Court had not made an analysis about the overall impression produced by the models, but a reference to their identities and differences, taking into consideration the expert report submitted to the proceedings by the defendant whereas the conclusions reached in Jané’s expert report were disregarded. In this regard, it was further criticized that the expert report of the adverse party included a wrong concept of the informed user, equated to the figure of a technician in violation of art. 10 of the RCD Regulation.

Despite the above arguments, the Court dismissed the appeal on 21 November 2013 and confirmed the findings of the RCD Court.

In connection with the figure of the informed user of infant seats, the Court of Appeal quoted the findings contained in the CJEU judgment in C-281/10 of 20 October 2011 (PepsiCo. Inc. v Grupo Mon Graphic S.A.) and stated that, as long as infant seats had very specific and particular features, the informed users cannot be the parents or relatives who purchase them and will only pay attention to their functionality. On the contrary, the informed users will be those involved in the marketing of the products, a group including manufacturers and producers, entrepreneurs in charge of their distribution and the retail commercial circles. They all make the selection not only for its price but also other features about which they inform customers. Therefore, although consumers do not normally pay attention to minor features of the different models, these features are however perceived by distributors and retailers.

Once the Court defined the scope of the figure of the informed user, the judgment lists to criteria to be taken into account in order to analyse the similarities between the contested models: the comparative pre-eminence and the freedom of the author. The first criterion entails that common features will not be relevant in the overall impression of the informed user.

As per the freedom of the author, the Court stated that there is a large variety of high chairs and that within this variety there are also sub-lines of shapes related to the functionality of the product. Specifically, high chairs for children belong to a sub-line of infant seats, which are products made of assembled elements, namely a wide base and a children chair having a frontal tray which confers the product a triple functionality. As a result of that, the freedom of the author is limited insofar as it is necessary that the high chair has to be made of three assembled pieces in order to fulfil the above functionality.

In the appeal filed by Jané, it was argued that the overall impression could not be determined from the similarities, identities and differences, and that the differences in the case at hand were minor and therefore irrelevant. Nevertheless, the Court disregarded this statement, arguing that the basic elements did not provide any information about the relevant overall impression. Otherwise, this would grant Jané a monopoly over a generalized structure in the market.

Consequently the Court dismissed the appeal, stating that the differences between the contested models were easily perceived and affected basic shapes, conferring each model a different configuration, which was clear and evident to the informed user described for the case at stake.

This contribution has been specially written for Class 99 by José Ángel García-Zapata of Bird & Bird (Spain) LLP, Madrid.