By a decision of 6 June 2019 (T-209/28), the General Court (EU), upholding the decision of the EUIPO Board of Appeal, ruled null the EU "Porsche 911" design, filed with the EUIPO in August 2010 in the name of F. Posche AG., in the motor vehicles class of the Locarno classification, on the grounds that it did not meet the requirements of novelty and individual character.
According to the argument initially made by Autec AG, a German company operating in the toy sector which in 2014 brought a nullity action against the design in question, the new Porsche design was not significantly different from previous designs of "Porsche 911" cars sold by the Stuttgart car manufacturer since 1963.
Under article 4 (1), Regulation 6/2002 protection of an EU design or model is guaranteed only to the extent that it is new and has individual character, understood as an overall impression in the informed user which is different from any design divulged to the public in the 12 months prior to the design being filed, also taking into consideration the degree of designer freedom if the shape is imposed by technical needs.
In its appeal to the General Court Porsche contested the conclusions reached by the EUIPO in the previous instances of the nullity action with regard to the lack of novelty and individual character of its design, holding that the definitions of "informed user" and "degree of designer freedom" used by the EUIPO were completely wrong .
According to the appellant the informed user should have been identified in specific relation to "Porsche 911" (or sports cars) and not to cars in general: this car is completely different by way of nature, goal and function and the user of reference would possess a degree of attention such as to perceive each element of differentiation of the new 911 model.
The General court upheld the interpretation of the EUIPO Board of Appeal, ruling that identification of the informed user cannot disregard the class of goods claimed by the design: in the case at hand the "Porsche 911" design was registered for motor vehicles in general and not for a specific class of sports cars, which does not exist in the current international classfication.
Porsche then requested that the "crowded art" theory be applied by virtue of the limited degree of freedom granted to the designer of the 911, in this case not so much for technical needs but for market expectations: consumers of reference would not wish the new 911 to differ beyond certain limits from the shapes that have made the design an icon throughout the world!
Once again agreeing with the conclusions reached by the EUIPO Board of Appeal the General Court ruled that market expectations could not in themselves affect the degree of freedom of the designer, finding that the "Porsche 911" design lacked novelty and individual character and consequently that it was null.
Protection as a registered design having been denied and given the well-known precedent of the national courts (cfr. Vespa case) the question arises as to whether the famous Porsche 911 deserves copyright protection pursuant to art. 2 (1) no. 10, Copyright Law, given that the design most probably meets the requirements of creative character and artistic value, being an icon in the field of reference, also thanks to its innumerable appearances in films, advertising, photographs, exhibitions and publications.
The shape of the Porsche 911 could aspire to protection as an unregistered shape trademark if the distinctive capacity acquired by the trademark through use of same and the lack of the impediments under article 7 (1) e) of EUTM Regulation (art. 9 CIP) were proven, also in light of the reasoning followed by the Court of First Instance and the Court of Appeal of Turin in the now famous Vespa case. In this case it was ruled that the shape of the Vespa was not imposed by the nature of the product, since it did not have the typical shape of the classic scooter. It was also ruled that the scooter did not have the necessary shape to obtain a technical result and that the shape did not confer substantial value on the product "it being clear that the reason behind the decision to buy the scooter with theshape of the Piaggio registered trademark does not depend only on the specific aesthetic characteristics of the designbut to a much greater extent on technical and financial conditions which are more important for a consumer set to buy a long-term, expensive product".
We shall have to wait and see whether the shape of the iconic Porsche 911 will race to the CJEU!