The General Court (GC) has held that the design of the model 911 of Porsche’s 991 series (2011 model year) does not have sufficient individual character compared with its predecessor, model 911 of the 997 series (2008 model year).
In its ruling, the GC found that the differences to the predecessor model were too small to influence the informed user’s overall impression. It therefore confirmed the declaration of invalidity of the EU design.
In the underlying proceedings, the toy manufacturer Autec – which has its registered office in Nuremberg, Germany – in 2014 filed an invalidity application against the EU design which claims the design of the Porsche 911 in the 991 series, shown below:
Autec argued that the EU design of the 991 series lacks individual character, as it does not clearly differ from earlier Porsche 911 models. Autec focused particularly on Porsche’s EU design no. 735428-0001, which was filed on 23 June 2008, as well as to the protection of the 997 series, shown below:
In its 10 May 2016 decision, the EUIPO declared Porsche’s EU design of the 991 series invalid on the grounds that it lacked individual character. On 19 January 2019, the Third Board of Appeal confirmed EUIPO’s declaration of invalidity on the grounds that it lacked individual character.
The GC dismissed the action Porsche had brought against the Board of Appeal’s decisions, thus confirming the declaration of invalidity.
The decision of the GC illustrates that the Court showed little flexibility in the course of its assessment of individual character, in order to take into account the sector’s particularities and market expectations.
In that respect, there is a risk that a “facelift” will not be deemed adequate to substantiate a sufficient individual character.
Consequently, this would result in the loss of the EU design for the facelift. However, the owner can enjoy protection for its original design. The scope of protection of the original model, provided that it is protected by design law, should normally also cover imitations of the follow-up model.
Source: LEXOLOGY
