Porsche 911 Design Protection in a Nutshell
Recently Porsche lost a design protection case for its widely known Porsche 911 model, with the European Court confirming such cancellation by quoting lack of individual character and no substantial difference from previous models.
Key Legal Issues
- Two designs are deemed identical if they merely differ in insignificant characteristics.
- Informed User refers to interest in a broad category not a mere restricted product.
- Customer expectations cannot be deemed as a factor that limits designer creative freedom.
Background to Porsche 911 Design Protection Case
The case in question centres around registered design of the newer Porsche 911 (the “New Porsche Model”). The design owner of Porsche is owned by the German automobile manufacturer Volkswagen AG, whilst the opposing party in this case was Autec AG with its boss Kurt Hesse. The latter is a German toy manufacturer from Nuremberg. Aurec had applied for the cancellation of the Porsche 911 New Porsche Model design before the EUIPO and was successful.
Through a case before the European Court (“EC”), the design protection Porsche was afforded was cancelled mainly based on the presence of conflicting designs and lack of an individual character. Porsche argued that the New Porsche Model designs for Porsche 911 should be warranted new protection in that the Porsche 911 is such an iconic car that the informed user would pay a high level of attention to the minute details of the more novel model. Porsche also emphasised that the freedom of the designer would be limited in light of consumers’ expectations.
The EUIPO Board of Appeal concluded that the new models examined were identical in shape and lines and that therefore not unique enough to justify design protection. The Board declared such two designs applications, filed by Porsche in 2004, null and void, and thereby confirmed the EUIPO’s decision that the later models of the 911 lack the registrable individual character. The Board confirmed that the New Porsche Model registrations do not sufficiently differ from the predecessor model already protected since the launch of the original version 911 model in 1963.
The contention in question started in January 2018 when Porsche had raised an opposition against the cancellation of two community designs, namely No 1230593-0001, and No 198387-0001 at the European Union Intellectual Property Office, (EUIPO). When these oppositions were rejected at the EUIPO, Porsche filed a complaint before the Court of Justice of the European Union (“CJEU”).[1] On 06 June 2019, the CJEU issued two judgements on the cancellation of such design protection.
Within this industry, so long as the design is protected, the toy manufacturer has to pay high royalties to renowned car companies if the popular models are copied as toy cars. Autec AG had argued that the design of the Porsche 911 New Porsche Model (the design registration in question) lacked both uniqueness and distinct character, since the two contested Porsche designs were essentially not different from other Porsche 911 original models placed on the market since the original 1963 version.
On the other hand, Porsche based itself on one single plea at law, namely infringement of Article 25(1) (b) of Regulation No 6/2002 as well as the argument that the proposed design established a different overall impression on the informed user than the original.
Design Protection: “Informed User”
The aspect of the “Informed User” was tackled in detail by the Board of Appeal.
Porsche claimed Informed User pays a higher degree of attention in the area of “expensive luxury limousines or sports cars”, would specifically be paying attention to the different model variants of the Porsche 911 passenger car and was therefore more likely to perceive minor changes of a design. This is the reason why Porsche pursued to protect such specific new design.
The GC 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. By stating this it was highlighting that it would not be the product specifically that is to be regarded, but the category of products that needs to be considered. Therefore, the Informed User of a passenger car is considered in general rather than the specific user of the Porsche 911 passenger car.
Design Protection: “Design Freedom of the Designer”
The discussion ensued on the aspect and scope of “design freedom of the designer”. Design case-law provides that there is a link between developer design freedom and the level of strength in the the differences between two designs. On this matter, Porsche argued that the ‘iconic character’ of the 911 series restricts the developers’ freedom of design from inception and claimed that the developer limited by the market’s expectations.
The GC reasoned that the ‘iconic character’ would merely be a customer expectation and not a mandatory limitation on the design or artistic taste of the designer. The Court contended that any design trend which satisfies the expectations of the customers can never be considered as restricting the freedom of the developer and that this freedom permits the developer to explore new forms or come up with something new within an already existing tendency. At the end, the GC concluded that the designs to compared were so similar that the renewed elements were not sufficient to cause a different overall impression in the perception of the informed user.
What this Means for You
In essence, this ruling provides that seeking protection for a new reverberation of a model necessitates a higher degree of specificity and that the design right application for a new model should clearly show such new characteristics.
In addition to their cars registrations, Porsche have more than 700 registered Community Designs filed at the EUIPO and have also sought design protection for individual elements such as exhaust pipes, wing mirrors, rear spoilers and steering wheels. Such extensive portfolio of design protection should be sufficient to prevent third-party use when producing infringing after-market products. The decision suggests that, in order to obtain protection for an updated version of a “classic” design, consideration must be given to maintaining the iconic appeal while changing the overall impression of more than just a few features here and there that can only be noticed by a highly specialised user. Seeking protection for a new iteration of a classic design is always very likely to be potentially open to challenge especially if one does not show and highlight all novel features clearly and specifically.
Also one might conclude that such decision is also aimed at preventing a classic registered design from obtaining protection for a period of more than 25 years.
The above decision will have considerable impact in the automotive industry and other industries which try to marry “nostalgic” products and, potentially, the next popular model product. Designers will face challenging times trying to balance the authenticity and novelty aspect with a “retro” look of older products.
Alternatively, designers might want to register sections of a new design in conjunction to the design as a whole, and resort to unregistered design rights emanating from the written law, in the first three years of disclosure, to attempt to prevent third parties from reproducing a (not so) new design.
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[1] EU:T:2019:380 and EU:T:2019:377
