The protection of functional forms is not just a question of patent law. If there is no patent protection or has already expired, the question arises as to whether forms with a technical function can possibly be protected by trademarks, designs, copyright or unfair competition law / transfer.
To prevent monopolies for technical solutions from extending the legal term of protection for technical innovations in patent law, many jurisdictions provide specific rules for the exclusion of features from protection by other intellectual property rights. Exploring the limits of these exclusions is a fascinating topic in our daily business.
US design patents can protect some features, as explained in previous blogs here and here. With regard to European law, the European Court of Justice (ECJ) added another building block to the building with its judgment of June 11, 2020 for Brompton Bicycle. (1)
The case centered around the popular folding bike from the British manufacturer Brompton, which has been sold in its current form since 1987. The bicycle was originally protected by patent. However, patent protection has expired.
The Brompton bike can have three different positions: folded, unfolded and a standby position that holds the bike upright when parked. A competitor marketed a bike that is visually very similar to the Brompton bike and that can be folded into the same three positions.
Brompton brought an infringement lawsuit before the Companies Court in Liège, Belgium. The defendant argued that the appearance of the contested product was determined by technical considerations. European trademark and design law contains provisions that preclude the protection of shape trademarks and designs with a technical function.
In the absence of a corresponding copyright provision, the Liège company court asked the ECJ whether EU copyright law should be interpreted in such a way that works are excluded, the form of which is at least partially necessary in order to achieve a technical result.
The CJEU ruled that copyright protection exists for a product whose shape is at least partially necessary to achieve a technical result, provided that the product is an original that results from intellectual creation. To determine whether the product falls within the scope of copyright protection, it must be determined whether “the author, through the choice of form, expressed his creative skills in an original way, by making free and creative decisions and by designing the product so that it reflects his personality. “(2) If the shape of a product is determined solely by technical considerations that leave no room for creative freedom, this product is not protected by copyright.
Regarding the criteria to be taken into account when assessing originality, the ECJ concluded that the existence of other possible forms with which the same technical result can be achieved is not critical but can serve as a reference, there was a choice for one possibility. The ECJ also pointed out that prior patent protection and the effectiveness of the shape should be taken into account in achieving the same technical result – but only to the extent that these factors make it possible to reveal what was taken into account when choosing the shape of the product In a suit.
The evaluation should take into account all relevant aspects that were present during the development of the product, regardless of factors outside and after its creation.
The beauty of the accumulation of intellectual property rights
The judgment of the ECJ Brompton Bicycle corresponds to its previous case law. This applies in particular to the decisions in Lego Brick (3) (trademark law), Cofemel (4) (copyright law) and Gömböc (5) (trademark law).
These previous decisions stipulate that the existence of other (already expired) intellectual property rights must be taken into account in order to prevent copyright and trademark rights from being compromised by the comparatively short patent and design protection conditions to promote competition and technological progress counteracts. However, in line with its previous case law, the ECJ's Brompton Bicycle decision also confirms that each IP right has its own function, conditions and scope of protection. In line with this approach, the CJEU did not transfer principles from trademark and design law, but applied its established case law strictly to the concept of copyright work. Forms that were (previously) protected by certain intellectual property rights can therefore be protected by other intellectual property rights or, as the CJEU recognized in previous decisions, by national unfair competition / disclosure laws.
Manufacturers of original industrial designs will appreciate this judgment, which expands the spectrum, so that they can continue to take legal action against product imitations even after patent protection has expired by asserting copyright claims.
(1) ECJ, judgment of 11 June 2020, case C-833/18
(2) Id., Para. 34.
(3) September 14, 2010, Case C-48/09.
(4) September 12, 2019, Case C-683/17.
(5) April 23, 2020, Case C-237/19.