Riding Copyright In The Right Direction?

Published date17 June 2020
AuthorMs Rebecca Campbell and Daniel Thorpe
Subject MatterIntellectual Property, Copyright, Patent, Trademark
Law FirmMarks & Clerk

The EU's highest court has ruled that copyright protection can apply to a product whose shape is functional and original. With private vehicle purchases at an all-time low, the CJEU's ruling in Brompton Bicycle Ltd v Chedech/Get2Get may be exactly what the manufacturing and automotive industries want to hear.

The decision clarifies the extent to which so-called culmination, or overlap, of intellectual property rights is possible under EU law. The recent case of Cofefel confirmed that products could benefit from both design and copyright protection in certain situations and clarified that only originality is required. Brompton now confirms that copyright can subsist in functional objects where the author is free to make some creative choices, akin to the law for Registered and Unregistered designs in the EU. Due to the longer term of copyright, this may be seen as good news for designers in the manufacturing industry and beyond as it may be possible to extend protection in addition to that provided by existing patent and design rights.

Background

British bicycle manufacturer Brompton is well known for its iconic folding bicycle, which was first marketed in its current design in 1987. Brompton had a related patent. However, the maximum term of a patent is 20 years, so this expired in 1999. Registered Community designs subsist for a maximum of 25 years so this would not have been a viable option for Brompton to protect its bicycle appearance today and design rights cannot protect features dictated solely by technical function.

Registered trade marks, which can last indefinitely, are the Holy Grail for many brands. In principal, European trade mark law protect shapes that are distinctive and which indicate trade source to consumers. However, as Jaguar Land Rover found in a recent case, it is not possible to obtain trade mark protection where a product's shape is exclusively dictated by its technical function, echoing the requirements for copyright and designs. Trade mark protection can also be refused on other grounds, such as where the shape adds substantial value to the goods. These issues highlight an issue with iconic designs that continue to be commercially viable for many decades. Given that many products take several years to make it to market, the duration of consumer-facing protection can be limited.

Perhaps due to these practical considerations, when Korean rival Get2Get introduced a folding bicycle with a similar appearance, Brompton brought a claim...

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