[Guest post] Functionality, cumulation and lessons from trade mark law: the Advocate General’s Opinion in Brompton Bicycle

A few days, The IPKat reported and commented on the Opinion of Advocate General (AG) Campos Sánchez-Bordona in Brompton Bycicle, C-833/18, a referral concerning copyright protection of functional shapes.

The IPKat is now pleased to host this guest commentary by Ilanah Fhima (UCL). An extended version of her article will be published by the Journal of Intellectual Property Law & Practice shortly.

Here's what Ilanah writes:

Functionality, Cumulation and Lessons from Trade Mark Law: the Advocate General’s Opinion in Brompton Bicycle

Kat on a Brompton-looking bike
(available here)

Much has been written about the Advocate General (AG)’s recent Opinion in Brompton Bicycle (see e.g. here and here), where the AG had to consider whether there is an exclusion from copyright where a shape is functional. Here are some thoughts from the perspective of someone who has been thinking a lot about functionality in trade mark law.

First, after Cofemel [Katpost here], there can be no stricter test for originality for works which are also designs than for other copyright works, nor can there be a test of aesthetic merit. This means that cumulative protection will be common. The AG saw this as a serious problem. Copyright lasts for a long time and so there will little incentive for designers to use the design system. This though fails to take into account that design protection, while shorter is in some ways more expansive. The AG was also worried about the effect on legal certainty, because there is no registration to look back to in copyright. While this may be true, many other IPRs manage to exist without a formal registration (including unregistered designs).

Second, the AG had a mammoth task. On the one hand, the Cofemel court had said that cumulation was a dangerous thing. On the other, it said that for copyright protection, the originality requirement for a design can be no different from other copyright works. Some sort of balance was required. The AG’s chosen tool derived from trade mark law, where a sign will not consist “exclusively” of the shape of the goods which are necessary to achieve a technical result if there are “one or more minor arbitrary elements in a three-dimensional sign, all of whose essential characteristics are dictated by the technical solution to which that sign gives effect. The trouble is, in trade mark law, the essential characteristics test is designed to examine what competitors need to compete, while in copyright, the explicit justification is to determine the designer’s degree of design freedom, which will in turn impact on originality. It is questionable whether a wholesale importation of ‘essential characteristics’ from trade mark to copyright is advisable, given the very different role it plays in the two systems.

Third, the AG said that an earlier expired patent is relevant but not determinative. A similar approach is apparent in trade mark law in Lego Juris. In practice though, it’s very difficult to find a trade mark case where there is an earlier patent but no functionality finding.

Fourth, the availability of alternatives is said to be relevant but not decisive to copyright functionality. This is in line with the approach to design functionality, but arguably less strict that trade marks. However, no concrete guidance is given on when alternatives will be relevant.

Fifth, the AG has been criticised for saying that functionality is an objective question, but then looking at the intention of the designer, which is subjective. We do this all the time in trade mark functionality though when we take into account functionality claims from the applicant’s advertising, website, and even patent claims. While the question of functionality is objective, the circumstantial evidence used to prove it may be subjective.

Finally, the AG rounds off by saying that even when a shape is functional, in cases of slavish imitation the applicant may be able to rely on unfair competition. It’s true this may lead to inconsistent protection across the EU, but that’s a consequence of the failure to harmonise unfair competition law. The CJEU made an identical point more than a decade ago in Lego Juris.