This session considered the interconnected IP rights that can be used to protect a product's design across Europe. The session brought together experts from Netherlands, Italy, France and the UK in order to shed light on how different countries approach overlapping intellectual property rights, and the challenges and opportunities that can arise.
The Quest for Harmonisation in protecting product design
Jesse Hofhuis from AC&R kicked off the discussion by questioning the extent of true harmonization in protecting product designs across Europe. While in theory, European law allows for products to be protected as trade marks, in practice, this is seldom the case. The traditions and legal interpretations vary significantly between countries.
For instance, before Cofemel: (i) the Netherlands' court applied the Infopaq decision which meant that it did not need to make a reference to CJEU, and (ii) the German courts held that Infopaq does not apply so again, there was no need for a reference. Post-Cofemel, some cases have continued to apply the same law and approaches a before Cofemel, without referring to the decision.
Jesse also noted that unfair competition laws face even slower EU harmonisation than copyright laws.
Italy's Multifaceted Approach
Noemi Parrotta from Spheriens gave us the Italian perspective on product design protection. Historically, Italy had a strict ban on cumulative rights due to the separability doctrine. Amongst other things, this prevented 3D shapes from being protected as copyright works. However, the landscape has evolved.
Noemi considered that registered designs are the strongest form of protection for product designs in Italy. Notable examples include the Falabella bag registration, which has faced no invalidating prior art (despite many attempts), and Alexander McQueen's oversized shoe, which benefitted from a series of design registrations (including a line drawing of the whole product and one which focused on the sole). However, you have a narrow window in which to file a registered design and if that one year period is missed, other forms of protection are required.
In Italy, trade marks, particularly famous ones, are valuable forms of protection if they can be registered. However, achieving trade mark protection for product shapes requires demonstrating that the product's shape significantly departs from the norm - this is a high threshold.
Unfair competition laws in Italy also offer avenues for protection, especially in cases of slavish imitation and post-sale confusion. Even if there's no direct confusion or free-riding, companies can argue that a competitor's actions don't comply with honest commercial practices.
France's Unity of Art Principle
Sarah Bailey from Simmons & Simmons' French office shed light on the French system, where the "unity of art" principle has long allowed for the same product to be protected simultaneously under copyright and design laws. French copyright doesn't concern itself with aesthetic quality but focuses on the originality stemming from the author's personal contribution.
Despite the challenges at the EU level - with only about a third of shape marks applications proceeding to registration - the French system offers slightly better odds for shape mark registration. Sarah noted that even functional items, like a hydro propeller, have been protected under French copyright law due to their originality.
However, whilst the Cofemel decision hasn't significantly altered the French approach it emphasises the need to address each protection regime and its criteria distinctly.
Sarah also noted that unfair competition is a very helpful right in France, both standalone and more commonly as part of a claim for copyright, design and/or trade mark infringement. She also flagged the value (and popularity) of regimes for recording a copyright work in France, particularly the Soleau Envelope which is low cost and run by INPI and therefore is popular with many in the creative industries.
Strategic Enforcement and Practical Tips
Catrin Turner from Air Wair International (the owners of Doc Martens) brought a pragmatic angle to the discussion. She emphasised that chaos and complexity can be advantageous both in terms of a trade mark and design portfolio and in any given litigation enforcement strategy. She advised against spending excessive time chasing factories in jurisdictions like China and instead recommended focusing on creating a robust and somewhat unpredictable portfolio. In her opinion, this strategy makes it harder for infringers to find loopholes. As she put it, because she spent many years acting for infringers, she is in a good place to know their tactics!
Key takeaways from Catrin include:
Consider all possibilities: Even if a protection route, such as a shape mark, seems like a stretch, it is still worth exploring as there is a significant potential upside to registration.
Keep infringers on their toes: Vary your approaches with different drawings and specifications.
Invest wisely: Spend what is necessary to win in key jurisdictions or in relation to key products.
Engage positively where appropriate: Brands like Dr. Martens often engage informally with smaller first timer infringers and maintain a friendly stance with fans but are less generous with larger or more persistent infringers.
Maintain momentum: Pace is crucial. Don't allow infringers to delay proceedings, and never grant an extension. If you don't get signed undertakings by a deadline be ready to issue proceedings the next day!
Final Thoughts
Protecting product design in Europe requires imagination, persistance and backing from the business' CFO! The session underscored the importance of understanding each country's unique approach and being adaptable in enforcement strategies.
While EU harmonisation is not yet complete, cases like Cofemel are starting to lead to a more consistent appraoch across Europe - although an attachment to local practices remains!
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com