Scope of Design Protection Afforded to Fashion Items

The Advocate General of the Court of Justice of the European Union has recently discussed the scope of design protection available to fashion items. The opinion is detailed and considers the applicability of design law and copyright law to the fashion industry. Our Intellectual Property team considers its impact on designers in the EU.

Can a shoe qualify for design protection where it consists of minor customisations only of existing designs, which are influenced by recent fashion trends? This question was recently considered by Advocate General (AG) Emiliou of the Court of Justice of the EU (CJEU). We consider the opinion and the key learnings for designers in the EU.

Background

Deity Shoes S.L. (Deity) brought actions for infringement of both registered and unregistered EU designs for various shoe models. The infringement actions were brought against Mundorama Confort S.L. (Mundorama) and Stay Design S.L. (Stay Design). By way of counterclaim, Mundorama and Stay Design argued that the contested designs are invalid as they are based on existing designs. These existing designs, they argued, are shown in the catalogues of Deity’s suppliers. According to Mundorama and Stay Design, the designs differ only in minor respects linked to the customisation of, for example, the:

• Sole
• Laces, or
• Buckles

Mundorama and Stay Designs argued that these customisations are influenced by recent fashion trends. Consequently, Mundorama and Stay Design argued that the contested designs are not the result of any ‘genuine design activity,’ ‘intellectual effort’ or innovation.

Questions referred

The Commercial Court of Alicante decided to stay the proceedings and to refer among others, the following questions to the CJEU for a preliminary ruling:

Question one

For a design to be protected under Regulation No. 6/2002, must there be a genuine design activity? Specifically, does the design need to result from the intellectual effort of its creator?

In that context, can a combination of components based on existing models be considered a genuine design activity? What if most of the design’s appearance is predetermined by suppliers, and any modifications to certain features are merely ad hoc or incidental, does that still qualify as a genuine design activity?

Question two

Must Article 14 of Regulation No. 6/2002 be interpreted to mean that a person can be regarded as the designer of a design if they have merely customised a prior design offered by suppliers through a catalogue? Specifically, does this apply where the person has modified components provided by the supplier but has not actually designed those components?

In that regard, is it necessary to prove a certain degree of customisation to show that the final form departs significantly from the prior design? And if so, is that degree of departure required in order to claim authorship of the design?

AG opinion

In answering the questions referred, AG Emiliou held that:

• The case law of the EU General Court illustrates that protection of an EU design may not be denied merely because some features of the design are dictated by constraints linked to, for example, the technical function of the product. Put simply, a design of a shoe shall not be refused protection as an EU design merely because its overall shape resembles that of a foot.
• The concept of a designer under design law must not be confused with that of an author under copyright law. Protection as an EU design may be granted without it being necessary to consider any attribute of the designer. For example, the designer’s personality, creative choices or intellectual creation. The author of a work under copyright law, and the designer under design law, are held to different standards. An author must produce an original work, which must reflect the author’s personality. In contrast, a designer only needs to develop a design which is ‘new’ and possess an ‘individual character.’
• For a design to enjoy protection as an EU design, it is not necessary to show that the design is the result of a ‘genuine design activity’ or ‘intellectual effort’ of the designer.
• The person or company that created the design does not have to show they carried out a genuine design activity or used intellectual effort to be considered the “designer.”
• Lastly, a design may be eligible for protection as an EU design even if it is made up of specific features or parts of earlier designs. This is the case so long as it produces on the user a different overall impression than those earlier individualised and defined designs. An EU design must not therefore be declared invalid simply because it consists of limited customisation from one or more prior designs.

Ultimately, the AG proposed that the Court answer the questions referred as follows:

1. Regulation 6/2002 requires that for a design to be protected under EU law, it is not necessary for a ‘genuine design activity’ to be involved or for the design to be the result of the ‘intellectual effort’ of the designer. Nor must the person or entity having developed the design have engaged in such ‘genuine design activity’ or ‘intellectual effort’ to be regarded as the ‘designer.’
2. Under Article 6 of Regulation 6/2002, fashion trends cannot be regarded as restricting the designer’s freedom in such a way that minor differences between one or more prior designs and the design at issue are sufficient for the latter to produce a different overall impression from the former on the informed user and thus have ‘individual character.’ Consequently, a design that differs from a prior design only in immaterial details influenced by fashion trends may lack an ‘individual character,’ within the meaning of that provision, and may not be eligible for protection as an EU design.

Comment

The AG’s opinion will be welcomed by designers as arguably it broadens the definition and the number of items which could qualify for design protection under EU law. In addition, it reinforces the test of individual character for designs which is the requirement to produce a different overall impression on the informed user. The AG’s comments on the distinctions between design law and copyright law also helpfully provide a reminder that while both protections can apply to the same items, as discussed in our recent article, the protections should not be confused and the creators of both sets of rights are held to different standards. We will eagerly wait to see if the CJEU endorses the content of the AG’s opinion or if there is a further twist to come.

For more information and expert legal advice on the impact of this case and how it affects your business, please contact a member of our award-winning Intellectual Property team.

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