The pitfalls of an iconic design

How Porsche lost design right battle over the 911

The EU General Court (CJEU) has this week upheld a decision to invalidate two EU Registered Designs which had been held by Stuttgart manufacturer Porsche AG in the shape of its iconic 911 performance car.

The designs had been challenged by Autec AG, a German toy-maker, in response to attempts by Porsche to prevent them from releasing certain models based on the 911 without paying substantial royalties to use the design. Autec’s claims to invalidate Porsche’s registered designs were first filed in 2014 with the Intellectual Property Office of the European Union (EUIPO).

The EUIPO ruling had found in Autec’s favour, in a case which relied on arguments by Autec that Porsche’s designs lacked novelty and individual character, since they did not differ sufficiently significantly from earlier iterations of the Porsche 911. Those familiar with the car will know that its distinctive aerodynamic shape has only changed by degree from version to version since its original inception in 1963, albeit that the modern 911 is of course a very different vehicle to its 1963 ancestor.

Porsche appealed this decision to the CJEU, arguing that their designs did display individual character even when compared to its own earlier designs. It was necessary, they argued, to take into account the fact that the “iconic” nature of the 911 design meant that their customers expected each new generation to look a particular way, with sometimes only quite subtle changes from one generation to the next.

This, the manufacturer argued, meant that their designers had only limited design freedom within which to operate, and within those limitations, the changes recorded by the designs in question did represent novelty and “individual character” when compared with what had gone before.

In other words, the less design freedom enjoyed by the designers – and it may be limited, for example, by the need for a design to fulfil a particular technical function – the more small or subtle differences between opposing designs will be sufficient to produce a “different overall impression” upon users.

The Court, however, did not agree. The test applied is the overall impression of the design on “the informed user” and the Court held that this meant the informed user of passenger vehicles generally and not of Porsche 911s specifically. As such, the general “informed user” would not be likely to be quite as alert to the more subtle differences between one model variant of the 911 and the next.

Similarly the Court was not persuaded that the effect of the “iconic” nature of Porsche’s 911 design was to limit its designers’ freedom in the manner suggested, and made clear that a general design trend which is intended to satisfy or is capable of satisfying the demands of particular groups of users is not effective in law to operate as a limitation on the freedom of the designers.

The CJEU held that the essential characteristics of the designs in question and the antecedents cited against them were the shape of the body, the doors and the windows of the vehicle, and the overall proportions between these elements. The Court found that the overall impression of Porsche’s designs was dominated by the very similar general structure of the conflicting designs, which were largely identical both in shape and silhouette.

As a result, the invalidity of Porsche’s registered designs has been upheld by the Court. This is significant not only because of the risk of other large-scale motor manufacturers being able to take advantage of the space created in the design world by the removal of this protection but perhaps more immediately because Porsche also as a result loses the right to control to the same extent the production of toys, models and replicas of its vehicles - the royalties for which provide a valuable income stream.

The lesson for design right-holders in products claimed as an “iconic” design, the evolution of which is to some extent dictated - or limited - by their own success is a clear one, and may have some businesses which rely on their distinctive product design casting an anxious eye over their portfolio of registrations.

Posted on: 20/06/2019

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.

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