Protection of functional shapes is not just a matter of patent law. If patent protection does not exist or has already expired, the question arises whether shapes with a technical function may be eligible for protection by trade marks, designs, copyright or unfair competition law/passing-off.
In order to prevent monopolies on technical solutions prolonging the statutory term of protection of technical innovations under patent law, many jurisdictions provide for specific rules on the exclusion of functional features from being protected by other IP rights. Exploring the boundaries of these exclusions is an intriguing topic in our daily business.
US design patents may protect some functional features, as discussed in prior blogs here and here. As far as European law is concerned, the European Court of Justice (ECJ) just added another brick to the edifice with its judgment of 11 June 2020 for Brompton Bicycle.
The case revolved around the popular folding bicycle by British manufacturer Brompton sold in its current form since 1987. Originally, the bicycle was protected by a patent. Patent protection expired, though.
The Brompton bicycle can have three different positions: Folded, unfolded and a stand-by position that keeps the bike upright while parked. A competitor marketed a bicycle that is visually very similar to the Brompton bicycle and which can fold into the same three positions.
Brompton brought an action for copyright infringement in the Companies Court, Liège, Belgium. The defendant argued that the appearance of the objected-to product was dictated by technical considerations. European trade mark and design law contain provisions excluding protection for shape marks and designs with a technical function.
In the absence of a corresponding provision under copyright law, the Companies Court, Liège, asked the ECJ whether EU copyright law had to be interpreted as excluding works whose shape is, at least in part, necessary to achieve a technical result.
The ECJ ruled that copyright protection is available for a product whose shape is, at least in part, necessary to obtain a technical result, provided that such product is an original work resulting from intellectual creation. To establish whether the product falls into the scope of copyright protection it has to be determined whether, through the choice of the shape, “its author has expressed his creative ability in an original manner by making free and creative choices and has designed the product in such a way that it reflects its personality”. Where the shape of a product is solely dictated by technical considerations, which have left no room for creative freedom, that product is not eligible for copyright protection.
Regarding the criteria to be taken into account in the assessment of originality, the ECJ concluded that the existence of other possible shapes, which can achieve the same technical result, is not decisive, but may serve as a reference that there has been a possibility of choice. Further, the ECJ indicated that prior patent protection and the effectiveness of the shape in achieving the same technical result should be taken into account – but only insofar as those factors make it possible to reveal what was taken into consideration in choosing the shape of the product in suit.
The assessment should consider all the relevant aspects as they existed when the product was designed, irrespective of factors external to and subsequent to its creation.
The beauty of IP rights cumulation
The ECJ’s judgment Brompton Bicycle is in line with its previous case law. This applies in particular to the decisions in Lego Brick (trade mark law), Cofemel (copyright law) and Gömböc (trade mark law).
These prior decisions consider that the existence of other (already expired) IP rights must be taken into account, to prevent copyright and trade mark law from counteracting the objective of the comparatively short terms of protection under patent and design law of promoting competition and technological progress. In line with its prior case law, the ECJ’s Brompton Bicycle decision also confirms, however, that each IP right has its own function, conditions and scope of protection. Corresponding to this approach, the ECJ refrained from transferring principles from trade mark and design law, but strictly applied its settled case law on the concept of work under copyright law. Shapes (formerly) protected by certain IP rights may thus be protected by other IP rights, or, as the ECJ acknowledged in previous decisions, the national laws of unfair competition/passing-off.
Manufacturers of original industrial designs will appreciate this judgment, which broadens the spectrum for them to continue taking legal action against product imitations by asserting claims under copyright law even after patent protection has expired.
 ECJ, judgment of 11 June 2020, Case C-833/18
 Id., paragraph 34.
 14 September 2010, Case C-48/09.
 12 September 2019, Case C-683/17.
 23 April 2020, Case C-237/19.