[Guest post] Design and copyright law must not be confused: the CJEU referral in C-323/24

The IPKat has received and is pleased to host the following guest contribution by Katfriend Henning Hartwig (Bardehle Pagenberg; Chair of the Committee for Design Law of the German Association for Intellectual Property Law) on the comments the GRUR Committee for Design Law submitted on the request made by the Juzgado de lo Mercantil Número 1 de Alicante, Spain, for a preliminary ruling of the Court of Justice of the European Union (CJEU) on the interpretation of provisions of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs. Here’s what Henning writes:

Design and copyright law must not be confused: the CJEU referral in C-323/24

by Henning Hartwig

The result of a "genuine design activity"

The Committee for Design Law (“GRUR Committee”) of the German Association for Intellectual Property Law (GRUR) has recently submitted its comments on the request for a preliminary ruling made by the Juzgado de lo Mercantil Número 1 de Alicante, Spain (“referring Court”), concerning the interpretation of Articles 6 and 14 of Regulation 6/2002 (“CDR”).

Also based on the Summary of the request for a preliminary ruling, which can be found here, the GRUR Committee is under the impression that the referring Court might have misinterpreted established requirements and standards under EU law and practice.

With its first question, the referring Court wishes to know whether a design, to be covered by the system of protection under the CDR, requires a genuine design activity in the sense of an intellectual effort of its creator. More precisely, the referring Court asks, whether the analysis must be limited to the requirements of novelty and individual character according to Article 4 (1) CDR or whether there is an additional implicit requirement, namely a genuine design activity.

The GRUR Committee’s opinion is that the requirements for design protection are, conclusively, laid down in Article 4 (1) CDR. Neither Article 4 (1) CDR, nor any other provision applicable in connection with the protection requirements of a Community design impose or allow the – explicit or implicit – requirement of a genuine design activity.

The second question follows on from the first question and focuses on the “individual character” requirement. In essence, the CJEU is asked whether a design can show “individual character” where the design is the result of the mere alteration, modification, or combination of components of designs, offered by Chinese trading undertakings in their catalogue.

To the referring Court, it seems that the differentiating element in products of that type is not the design but the price of the product, as that is what makes orders and subsequent marketing profitable. It appears that the referring Court tends to consider that these designs do not fulfil the individual character requirement.

The GRUR Committee considers that the second question of the referring Court, again, reveals an incorrect examination standard of the individual character requirement laid down in Article 6 CDR. Overall, the GRUR Committee is of the opinion that the second question should be answered in that sense that for finding individual character, it is irrelevant whether all or some of the features of appearance of the product result from the customization of designs that are offered by trading undertakings, in accordance with those undertakings’ catalogues, even if the activity of the owner of the design is limited to marketing those designs in the EEA, either without modification or with specific modifications, or with features of appearance that might be considered as predetermined for the most part by the trading undertakings. In that regard, it is likewise irrelevant whether the products are designed by European undertakings or offered by Chinese trading undertakings.

By its third question, the referring Court asks about the concept of ‘designer’ according to Article 14 CDR, and specifically whether, in the event of a dispute as to the existence of a design, the owner of the design must prove a specified degree of customisation in order to demonstrate that the final form departs significantly from the original design in order to be able to claim authorship.

The GRUR Committee’s opinion is that the concept of ‘designer’ is conclusively regulated in Article 14 CDR. Particularly, neither Article 14 CDR nor other provisions included in Section 3 (“Right to the Community design”) of Title II of the CDR give rise to the assumption that the owner of the design must prove the existence of a specified degree of customisation in order to be able to claim authorship.

By its fourth question, the referring Court recalls the position of the Spanish Supreme Court set out in the judgment of Civil Section 1 of 25 June 2014, and asks whether, given the characteristics of the footwear described in the terms set out in the fourth question, which follows fashion trends, those fashion trends should be regarded as:

1. restricting the designer’s freedom in such a way that minor differences are sufficient to give a different overall impression or, conversely,
2. detracting from the distinctiveness of the 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.

Proceeding from established case law, the GRUR Committee, in conclusion, is of the opinion that Article 6 CDR must be interpreted as meaning that fashion trends do not limit the degree of freedom of the designer in developing the design, regardless of the fact that the design has been developed based on a sample book or catalogue or is limited to selecting existing designs from a sample book or to varying some of their components taken from a catalogue. In assessing whether a design has individual character features of appearance of a design which result from existing fashion trends must be assessed in the same way as other features when comparing the overall impression produced by the design on the informed user with a previous design.

The complete submission of the GRUR Committee can be found here and here.