Is the Community design the little sister of copyright?

The Court of Justice of the EU (‘CJEU’) found in its Cofemel judgment (case C-683/17, IPKat here)

that the protection of designs, on the one hand, and copyright protection, on the other, pursue fundamentally different objectives and are subject to distinct rules. As the Advocate General observed, […], the purpose of the protection of designs is to protect subject matter which, while being new and distinctive, is functional and liable to be mass‑produced.

But what are these objectives and distinct rules the CJEU talks about? In particular, does design protection require some form of intellectual effort or design activity on the part of the designer? These and related questions were referred to the CJEU by a Spanish court (Deity Shoes, case C-323/24).

Background

In 2021, Deity Shoes, S. L. (‘Deity Shoes’) brought an infringement action against Mundorama Confort S.L. (‘Mundorama Confort’) and Stay Design S.L. (‘Stay Design’) based on registered and unregistered Community designs for various shoe models before the Alicante court.

Mundorama Confort and Stay Design filed a counterclaim for a declaration of invalidity of Deity Shoes’ registered Community designs (‘RCD’) arguing a lack of novelty and individual character. The designs are not reproduced in the reference for a preliminary ruling.

Mundorama Confort and Stay Design contended that there is no innovation involved in the production of Deity Shoe’s designs. The production process is described as follows:

(i) The suppliers of all parties involved are trading undertakings located in China, which cover the entire operation of production, import and export of the shoes;

(ii) The Chinese trading undertakings present the staff of the parties (usually sales and marketing people) with product sample books containing various shoe models;

(iii) The parties’ staff members review the sample books and propose to the suppliers specific modifications of the shoe’s features (such as colour, materials, the location of the buckles, laces and other decorative elements);

(iv) Once the characteristics of the final product have been agreed, the Chinese suppliers send the finished goods to Spain together with certificates detailing the process of customisation.

The referring court found that Deity Shoes’ models were based on the models offered by the Chinese trading undertakings with slight modifications.

The referring court also mentioned that price was a very important factor in the shoe sector and any change to the basic model, involving greater customisation, led to an increase in costs that reduced the margins of the parties. There was therefore no real incentive to make substantial changes to the basic models offered by the Chinese suppliers.

The Spanish court also stated that Deity Shoe’s RCDs and unregistered designs did not have any fashion component. They were inspired by known fashion trends.

The reference for a preliminary ruling

Against this background, the referring court asked the following questions:

(1) In order for a design to be covered by the system of protection under [the Community Design Regulation (‘CDR’)], is it necessary for there to be a genuine design activity in such a way that the design is the result of the intellectual effort of its creator? And, in that regard, may a combination of components on the basis of models whose features of appearance are for the most part predetermined by the trading undertakings, with the effect that modifications to certain features are to be regarded as ad hoc and incidental, be regarded as a genuine design activity?

(2) In the light of the foregoing, may all or some of the feature(s) of appearance of a product resulting from the customisation of designs that are offered by Chinese trading undertakings, in accordance with those undertakings’ catalogues, be regarded as having individual character within the meaning of Article 6 [CDR], where the activity of the owner of the design is limited to marketing those designs in the EEA without modification or with specific modifications of components (such as soles, rivets, laces, buckles and so forth) and the features of appearance are predetermined for the most part by the trading undertakings? In that regard, is it relevant that the components are not designed by the European marketing undertaking either, but are components offered by the trading undertaking itself in its catalogue?

(3) Must Article 14 [CDR] be interpreted as meaning that a person may be regarded as the designer in relation to a design where, on the basis of a design offered by trading undertakings in accordance with a catalogue, he or she has merely customised that prior design by modifying components also offered by the trader, and those components have not been designed by the European marketing undertaking? In that regard, is it necessary to prove a specified degree of customisation in order to demonstrate that the final form departs significantly from the original design and thus that authorship may be claimed?

(4) Without prejudice to the foregoing, in a case such as the present case, in view of the particular characteristics of footwear designed on the basis of trading operators’ sample books and, in so far as the ‘design’ is limited to selecting existing designs from a sample book and, where appropriate, to varying some of their components, from those in the catalogue which the manufacturer itself (the trading undertaking) offers, all in accordance with fashion trends, must it be understood that those fashion trends: (a) restrict the designer’s freedom in such a way that minor differences between the registered (or unregistered) design and another model are sufficient to give a different overall impression or, conversely, (b) detract from the individual character of the registered (or unregistered) design with the effect that those elements or components are of less importance in the overall impression they produce on the informed user in so far as they result from known fashion trends when compared with another model?

Comment

1. The first two questions essentially ask the CJEU whether design protection requires an intellectual effort or whether it may be limited to amending existing designs, which are part of the prior design corpus.

The CDR does not appear to contain any indication that an intellectual effort or any (significant) design activity is required for design protection. Neither the conditions for protection in Art. 4 to Art. 9 CDR nor the grounds for invalidity in Art. 25 CDR support such a requirement.

The fundamental principle is that a design is protectable as a Community design if it creates a different overall impression from that of any previously disclosed design (subject, of course, to further limitations such as Art. 8 and Art. 9 CDR).

If an intellectual effort were required, design protection would essentially become indistinguishable from copyright protection. This would be difficult to align with the CJEU’s statement in the Cofemel judgment cited above. The reference to functional and mass-produced subject matter of design protection indicates that even rather banal designs can enjoy protection and that there is no need for an intellectual effort.

2. As regards the third question on the determination of who the designer is, it seems that the CJEU has not yet had a chance to define the term ‘designer’ in Art. 14(1) CDR. It only held that the term must be interpreted autonomously (FEIA, case C-32/08 at paras. 63 et seq.).

3. The first part of the fourth question concerns a limiting effect of design trends on the freedom of the designer. It is consistent case law of the General Court (case T-74/18 at para. 75) that

a general design trend cannot be regarded as a factor which restricts the designer’s freedom, since it is precisely that freedom on the part of the designer that allows him to discover new shapes and new trends or even to innovate in the context of an existing trend [case law citations]. In fact, the question whether a design does or does not follow a general design trend is relevant, at the most, in relation to the aesthetic perception of the design concerned and can therefore, possibly, have an influence on the commercial success of the product in which the design is incorporated. By contrast, such a question is not relevant in the examination of the individual character of the design concerned, which consists in verifying whether the overall impression produced by it differs from the overall impressions produced by the designs made available earlier, irrespective of the aesthetic or commercial considerations [case law citations].

This seems reasonable because a designer can decide whether to follow the trend or not.

4. As regards the second part of the fourth question dealing with the impact of design trends on the relative weight of design elements following these trends, it is consistent case law of the German Supreme Court that design elements, which are known from the prior design corpus, must be given less weight in the overall impression (Ballerinaschuh, I ZR 187/16 at para. 42). The informed user would not pay much attention to elements, which are known from previously disclosed designs.

Let us see if the Advocate General and the judges of the CJEU agree. 

The picture is by Linggar Cindardewi and used under the licensing terms of Pexels.com.