CJEU’s AG on EU designs: Designs do not require originality, and fashion trends do not limit the freedom of the designer

Deity Shoes owns EU design for various models of shoes. It claimed that Mundorama Confort and Stay Design infringed those designs. Mundorama Confort and Stay Design counterclaimed that the contested designs are invalid, arguing that the designs are based on existing designs, shown in the catalogues of Deity Shoes’ suppliers, from which they differ only in minor respects because of the customisation of, for example, the sole, laces or buckles – which are influenced by fashion trends. In their view, the contested designs are thus not the result of any ‘genuine design activity’, ‘intellectual effort’ or innovation.

The case was brought before the CJEU by reference for a preliminary ruling by the Juzgado de lo Mercantil n° 1 de Alicante (Commercial Court No 1, Alicante, Spain). The Advocate General broke down the questions of the referring court into two issues:

• Does a EU design require a “genuine design activity” or “intellectual effort”?
• Do fashion trends limit the freedom of the designer?

The answer to both questions, according to the Advocate General (AG), is “no”.

The Advocate General confirms that the only requirements for a design to enjoy protection as a EU design are those laid down in Article 4 (1) of Regulation 6/2002: novelty and individual character. For both requirements, the design must be compared to prior designs made available to the public. Novelty requires that no identical prior design has been disclosed, and individual character requires that the design produces a different overall impression on the informed user.

The AG confirms that those conditions are exhaustive, and that the Regulation does not contain any additional condition to the effect that a ‘genuine design activity’ must take place in producing the design or that the latter must be the product of an ‘intellectual effort’. The AG makes a clear distinction to the requirement of “originality” which applies to copyright protection. Designs do not require originality, and they are not the result of artistic expression leading to a personal individual creation as a work in the sense of copyright. 

The freedom of the designer is relevant when assessing the “individual character” of the design, i.e. whether the design produces a different overall impression on the informed user when compared to the design corpus.  As part of that assessment, the designer’s degree of freedom in developing the design must be taken into account.

The General Court recognized that the following constraints limit the freedom of the designer: constraints imposed by the technical function of the product (or an element thereof), as well as by statutory requirements applicable to the product which result in a standardisation of certain features and are, thus, common to all the designs applied to the product concerned.

With regard to the freedom of the designer, the following rule of ‘inverse proportionality’ applies, as developed by the General Court: the more the designer’s freedom in developing the design at issue is restricted, the more likely minor differences will be sufficient to produce a different overall impression on the informed user. Hence, a high degree of freedom for the designer strengthens the conclusion that designs without significant differences produce the same overall impression on the informed user and, consequently, that the design at issue does not have individual character. Conversely, a low degree of freedom for the designer supports the conclusion that sufficiently marked differences between the designs produce a different overall impression on the informed user and, consequently, that the design at issue does have an individual character. The AG points out that these statements of the General Court have yet to be confirmed by the Court of Justice, and that he fully agrees with them.

With regard to fashion trends, the AG points out he supports the case law of the General Court that has found that the question whether a design does or does not follow a general design trend is not relevant to the assessment of whether there are limits to the designer’s freedom.

The AG points out that the EU design regulation was introduced to enable the protection of features linked to fashion trends as elements of a EU design. The fashion sector produces a large number of collections with a relatively short market life. That creates a demand for efficient, short-term design protection. In addition, protecting features linked to fashion trends encourages innovation.

Features linked to fashion trends also differ from those linked to the technical function of the product or the applicable statutory requirements. The latter are both inevitable (in the sense that all designs of the product in question must necessarily comply with them) and permanent or long lasting. The same cannot be said for features linked to fashion trends, which are, by nature, ephemeral.

Besides, design trends are intrinsically linked to ‘market expectations’, which, by nature, are highly fluctuating. In that regard, the General Court has already ruled that consumer expectations do not constitute a constraint that necessarily limits the degree of freedom of a designer, and that the fact that a general design trend is capable of meeting the expectations of relevant consumers cannot be regarded as a factor which restricts the designer’s freedom, That freedom enables the designer to discover new shapes and new lines or even to innovate in the context of an existing figurative trend. Consequently, ‘potential market expectations’ shall not be taken into account in order to determine the designer’s degree of freedom.