Design law
Although the case itself is about the protection of shoes by design law, the court rules on the broader legal framework concerning the requirements of design protection: novelty and individual character (articles 4 to 6 of the EU Design Regulation). The court also gives more guidance on the rights belonging to the designer or their legal successor. Moreover, the court explains the differences between EU copyright and design law.
Novelty and individual character
Designs may be protected by design law if these are novel and have individual character. A design shall be considered to be new if no identical design has been made available to the public before. Individual character means that the overall impression the design produces, differs from any design which has already been made available. Under the EU design regulation, in assessing individual character, the degree of freedom of the designer in developing the design shall also be taken into consideration.
Design activity?
The Court now answers specific questions on the design activity by the designer, which also have particular relevance for the possibilities of design protection and therefore the protection of features of the appearance of a product.
In this case, the questions are about the degree of customisation of the products in questions – shoes – and the legal position of the designer, particularly whether the owner or designer of the design must demonstrate, in addition to the existence of the conditions of novelty and individual character, that that design is the result of a minimum degree of originality.
The Court recalls that a ‘design’ is defined as ‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation’.
The court rules that the designer’s freedom may restricted by a high number of features of appearance of the product, or of the part of the product at issue, which are solely dictated by the technical function of that product or of that part of the product, the presence of minor differences between the designs at issue may be sufficient to produce a different overall impression on the informed user. However, the design legislature does ‘not require that, in addition to the existence of the conditions of novelty and individual character, it be demonstrated (…) that that design is the result of a minimum degree of creation’. Therefore, only the conditions of novelty and individual character apply.
This is where design law differs from copyright protection. The concept of a copyright ‘work’ entails that there exists an original subject matter. However, the purpose of the protection of designs – according to this recent judgment by the Court – is to protect subject matter which, “while being new and distinctive, is functional and liable to be mass-produced”.
This also means that (only) a comparison between the existing design corpus, on the one hand, and the design for which protection is requested, on the other hand, is to be made. Design protection is thus not based on a minimum degree of creativity on the part of the designer.
The legal position of the ‘designer’
Under article 14(1) of the EU design regulation the right to a design belongs to the ‘designer’ or his or her successor. However, according to the judgment of the Court, that article cannot be interpreted as meaning that the EU legislature intended to establish an additional condition relating to the demonstration of a minimum degree of creation, in order to enjoy the protection conferred by articles 4 to 6 of the EU design regulation. The term ‘designer’ “is relevant only for determining the person or entity to whom protection of the design will be conferred”. This is important for the legal position of the designer.
Design composition and design trends?
In this particular case, a shoe model was offered in a supplier’s catalogue, and modifications could be made thereto (but only ad hoc and related to components offered by that supplier). Under these circumstances, can there be a valid design right? And does the fact that features of a design resulting from fashion trends is of importance in determining design protection?
The court rules that a design ‘can be composed of various prior designs, where, taken individually, the resulting design does not produce the same overall impression on the informed user as that produced by those prior designs’. This means that the fact that models offered in the suppliers’ catalogues to the designer of those designs, and that the modifications made to those designs by that designer are only ad hoc and relate to components offered by those suppliers, is not in itself likely to preclude recognition of their individual character. Models or designs formed from a catalog can thus be protected.
Regarding the question on fashion trends, the Court rules that:
“It is of the very essence of fashion not to last and to evolve, precisely, according to both visual and technological innovations. Furthermore, fashion trends cannot be considered to be inevitable in the sense that they necessarily predetermine the features of a product and that a designer does not have the freedom to innovate to depart from them. (43)
Furthermore, such trends cannot be regarded as a factor limiting the freedom of the designer, since it is precisely that freedom which allows him or her to discover new forms, new trends, or to innovate within the framework of an existing trend. (44)”
This means that fashion trends do not limit the degree of freedom of the designer, in such a way that minor differences between one or more prior designs and the design at issue may suffice for that design to produce a different overall impression on the informed user than that produced by the former.
It still remains necessary to determine whether the elements of a design, which result from of fashion trends, are likely to influence the perception that an informed user has of them. However, according to the judgment, “fashion trends should not, in principle, make the informed user less attentive”. The Court admits that the fact that certain elements are omnipresent in the market concerned, in the sense that they result from of massively adopted trends or that many suppliers offer identical elements, can impact the aesthetic perception of a design, or even influence the commercial success of the product in which it would be incorporated. However, such consideration is not relevant in the examination of the individual character of the design, which is to be based on whether the overall impression produced by that design differs from that produced by the designs made available earlier, irrespective of the aesthetic or commercial considerations.
Conclusions
The practical implications of this judgment for protection of product design by design law, including fashion goods, cannot be underestimated. Only novelty and individual character matter. Originality is not a requirement under design law. Even catalog-based designs can be protected. Also, fashion trends do not diminish the importance of elements in the design’s overall impression, and in principle do not hinder design law protection. In conclusion, the legal position of designers under design law is strengthened by this judgment.
