French Supreme Court reconsiders the notion of “informed user”

Tuesday, 30 of April of 2019

On 13 March 2019, the commercial division of the French Supreme Court overturned the Paris Court of Appeal's interpretation of “informed user” (Case nº 17-18.517). While the dispute included both Community design infringement and unfair competition, we exclusively focus on the design issues.

The case arose from an action brought by Einstein Shoes BV, the proprietor of three Community designs protecting footwear soles, and Ferro Footwear BV, its exclusive licensee, against SAS Chaussea, a footwear retailer. Chaussea, in its response, added its supplier as respondent to the proceedings and brought a counterclaim arguing that the Community designs should be cancelled due to lack of novelty and individual character.

Under EU law, the notional informed user in relation to community designs is ruled by Articles 4 and 6 of the Regulation 6/2002 of 12 December 2001. According to these provisions, when assessing how to decide whether a design is new and has individual character, it is necessary to consider whether the overall impression on the informed user is different from the overall impression produced on such a user by any design which has been made available to the public. Articles L.511 - 3 and 4, of the French Intellectual Property Code essentially establishes the same assessment, save that French law refers to the informed observer.

In this case, the Paris Tribunal de Grande Instance considered, at first instance, that the informed user would be a “professional in the sector concerned”. On appeal, the Court of Appeal extended the scope of the notion of informed user by stating that they would be “any person that habitually purchase shoes, paying attention to their soles, and therefore having a good knowledge of the soles of shoes”. On this basis, the Paris Court of Appeal considered that the particular combination of the patterns visible on the soles in question, as set out in the Community design filed, provided the informed user with a different overall impression than could have been made from any other previously disclosed models.

The French Supreme Court rejected the extension of the scope of the informed user ruled for the Paris Court of Appeal, ordering the referral back of the procedure to the Court which, composed of a different set of judges, will have to decide whether to maintain the restrictive interpretation or, otherwise, maintain the extensive scope, but, in such a case, it should be justified on the basis of valid arguments.