Porsche, a German automobile manufacturer owned by Volkswagen AG, has recently lost the design protection for its widely-known Porsche 911 before the European Court (EU). The cancellation of the design protection was mainly due to the presence of conflicting designs having identical general structure. Porsche automobile designs therefore lack an individual character, which is an important legal case for the entire automotive industry worldwide.
For the famous model Porsche 911, the European Court on June 06, 2019, issued two judgments on the cancellation of design protection. Initially 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) last year in January. When these oppositions were rejected at the EUIPO, Porsche in turn filed a complaint before the European Court of Justice. Autec AG, a German toy manufacturer from Nuremberg, owned by Kurt Hesse, was the opposing party in this case. The toy manufacturer had applied for the cancellation of the Porsche 911 design protection and was successful in getting the right before the EUIPO.
If the popular car models are replicated as toy cars, the toy manufacturers have to pay high peak royalties to the car manufacturers, as long as design protection exists. In this entire case, Porsche counted on just a single plea in law, claiming infringement of Article 25(1) (b) of Regulation No 6/2002 and, as well as that the proposed design established a different overall impression on the informed user from the one set up by the earlier design used by the German toy manufacturer to support its proclamation of invalidity.
The Board of Appeal reviewed the aspect of the “informed user” by stating that it isn’t the product specifically, but the category of products that are taken into account. So the informed user of a passenger car is taken into account in general rather than that of a Porsche 911 passenger car. However, Porsche then asserted that the informed user was specifically paying attention to the different model variants of the Porsche 911 passenger car.
When it comes to the aspect of “design freedom of the designer”, the Board of Appeal reviewed that the designer was not restricted in the design to which Porsche asserted that the designer was limited in the market’s expectations that purchasers would discern the Porsche 911 as an exemplary design idea. The Court of Justice of the European Court declined Porsche’s arguments by pointing out that in general, any design trend which satisfies the expectations of the customers can never be considered as restricting the freedom of the developer. Nevertheless, this freedom permits the developer to explore new forms or come up with something new within an already existing tendency.
While coming to the overall impression of the contested community design, the Board of Appeal couldn’t prove the fact that when it comes to the different ranges of the same model, a potential customer would necessarily pay attention even to the slightest differences. The European Court of Justice, rightly pointed out that the designers usually do not constantly come up with new models rather prefer to modernize the existing ones, which the informed users are well aware of. The Court also asserted the fact that the overall designs are dominated by conflicting designs which are similar in essential characteristics like the shape and silhouette.
In a nutshell, Porsche’s arguments were rejected by the European Court in both the proceedings which ultimately led to the cancellation of its Porsche 911 design protection.