From “Local Privilege” to “Global Standard”: Facilitating Design and Copyright Protection for Non-EU Product Shapes

Kur, Annette Article — Published Version From “Local Privilege” to “Global Standard”: Facilitating Design and Copyright Protection for Non-EU Product Shapes IIC - International Review of Intellectual Property and Competition Law Provided in Cooperation with: Springer Nature Suggested Citation: Kur, Annette (2025) : From “Local Privilege” to “Global Standard”: Facilitating Design and Copyright Protection for Non-EU Product Shapes, IIC - International Review of Intellectual Property and Competition Law, ISSN 2195-0237, Springer, Berlin, Heidelberg, Vol. 56, Iss. 5, pp. 970-983, https://doi.org/10.1007/s40319-025-01606-4 This Version is available at: https://hdl.handle.net/10419/323684 Standard-Nutzungsbedingungen: Die Dokumente auf EconStor dürfen zu eigenen wissenschaftlichen Zwecken und zum Privatgebrauch gespeichert und kopiert werden. 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If the documents have been made available under an Open Content Licence (especially Creative Commons Licences), you may exercise further usage rights as specified in the indicated licence. http://creativecommons.org/licenses/by/4.0/ ARTICLE From ‘‘Local Privilege’’ to ‘‘Global Standard’’: Facilitating Design and Copyright Protection for NonEU Product Shapes Annette Kur Accepted: 14 April 2025 / Published online: 30 April 2025 The Author(s) 2025 Abstract It is well known that EU law tends to offer rather generous protection for product shapes, not least under industrial design and copyright law. Until recently, however, the statement had to be qualified with regard to works or designs not originating in the EU (or the EEA). For designs, this resulted from the fact that, pursuant to the majority opinion, designs first published outside the EU were not entitled to benefit from Unregistered Community Design protection under Art. 11 of the Community Design Regulation. Concerning copyright, Art. 2(7) of the Berne Convention was assumed to bar access to protection for works that in their country of origin are only amenable to protection under industrial design law. In both aspects, recent developments in EU law have levelled the bars, turning ‘‘EU-style’’ protection into a ‘‘global standard’’. Keywords Design law reform Unregistered Community designs Supplementary unregistered design Works of applied art Reciprocity Law applying to aliens 1 Introduction Compared to other legal systems, protection of product appearances in the EU tends to be rather generous. This concerns protection for shape marks, which is complemented in a number of Member States by specific, as yet non-harmonised rules on unregistered trade mark protection or protection under unfair competition law. In addition, EU law grants low-threshold access to industrial design A. Kur (&) Prof. Dr. Dr. h.c.; Affiliated Research Fellow, Max Planck Institute for Innovation and Competition, Munich, Germany e-mail: [email protected] 123 IIC (2025) 56:970–983 https://doi.org/10.1007/s40319-025-01606-4 protection, 1 and, due to CJEU case law, the prerequisites for protection under copyright are confined to the work being an author’s own intellectual creation. 2 However, until recently, the generous tableau concerning industrial design and copyright law had to be qualified with regard to works not originating in the EU. Regarding industrial design protection, the special instrument of the Unregistered Community Design (UCD) was held to apply only to designs that were first published within the territory of the EU, thereby practically withholding that option from designers located outside the EU. 3 In copyright, Art. 2(7) second sentence of the Berne Convention establishes an obstacle to protection for works which, in their country of origin, can only profit from design protection. 4 In its recent Kwantum decision, 5 the CJEU has declared that, lacking an express reservation to that effect in the InfoSoc Directive, Art. 2(7) Berne Convention cannot be invoked vis-a `-vis non-EU works. And concerning UCDs, the recent design law reform consciously removed wording from the previous law which had been quoted by the majority opinion in support of its restrictive approach. This article recounts and comments on the developments. First, it addresses the background and presumable reasons for the change in design legislation (Sect. 2). The Kwantum decision is then put in context, including a reference to the preceding RAAP judgment (Sect. 3). Finally, the question is posed as to the consequences, and whether measures are called for to safeguard justified interests of right holders or the public within the EU (Sect. 4). 2 Design Legislation 2.1 Regulation No. 6/2002 As a unique feature among unitary EU rights created so far, Art. 11(1) of the Community Design Regulation No. 6/2002 (CDR) established a right that comes into existence without registration. Pursuant to the provision, designs fulfilling the substantive requirements for protection (i.e. which are novel and have individual character) ‘‘shall be protected by an unregistered Community design for a period of three years as from the date on which the design was first made available to the 1 The EU industrial design system was established by Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (DD) and Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (CDR). The DD was replaced in 2024 by Directive (EU) 2024/2823 of the European Parliament and of the Council of 23 October 2024 on the legal protection of designs; the CDR was amended by Regulation (EU) 2024/2822 of the European Parliament and of the Council of 23 October 2024 (EUDR). 2 See Sect. 3.2. 3 See Sect. 2.1. 4 ‘‘Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works’’. 5 Case C-227/23 Kwantum v. Vitra Collections [2024] ECLI:EU:C:2024:914. 123 From ‘‘Local Privilege’’ to ‘‘Global Standard’’: Facilitating Design…971 public within the Community’’. The wording does not clearly state whether the territorial element (‘‘within the Community’’) relates to the place of publication or to the location of the target public. Article 11(2) CDR offers a somewhat closer definition: For the purpose of paragraph 1, a design shall be deemed to have been made available to the public within the Community if it has been published …in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community. While that phrase as well is not unambiguous, it invites drawing a parallel to Art. 7(1) second half-sentence CDR, which stipulates, in nearly identical wording, that a pre-published design is not deemed to have been made available to the public ‘‘where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community’’. As was clarified by the CJEU in Gautzsch, Art. 7(1) second halfsentence CDR applies irrespective of where the place of publication was located. 6 Does this mean that Art. 11(1) CDR must be interpreted accordingly? The question was denied by the German Federal Supreme Court in its Geba ¨ckpresse (bakery press) decision, mainly based on the consideration that Art. 7(1) CDR refers to ‘‘making available to the public’’, while Art. 11(1) CDR adds‘‘within the Community’’. 7 On the other hand, the fact remains that the legal definition of that phrase in Art. 11(2) CDR uses exactly the same words as Art. 7(1) second half-sentence CDR. According to established principles of interpretation, this indicates that both must be interpreted concordantly, meaning that it is not the place of publication, but only the location of the target public which is of relevance. Until recently, however, such considerations appeared to be moot in view of a provision inserted in the course of the EU enlargement in 2004. Article 110a CDR, which regulates the consequences of extending the Community design regime to the new Member States, addresses UCDs in paragraph 5 second sentence, stipulating that ‘‘(p)ursuant to Article 11, a design which has not been made public within the territory of the Community shall not enjoy protection as an unregistered Community design’’. This seemed to disperse the lingering doubts. Pointing to that sentence, the Federal Supreme Court considered the issue to be an ‘‘acte clair’’, which does not call for a referral to the CJEU. In BHTB v. PMS, 8 the High Court of England and Wales (Hacon J.) sided with the German Federal Supreme Court regarding the relevance of Art. 110a(5) CDR. However, being more cautious, the court decided to refer the question, among others, to the CJEU. 9 After the dispute was settled between the parties, the case was withdrawn, leaving the matter open for now. 6 Case C-479/12 Gautzsch v. Duma [2014] ECLI:EU:C:2014:75, para. 33. 7 German Federal Supreme Court (Bundesgerichtshof, BGH), I ZR 126/06, GRUR 2009, 79 – Geba ¨ckpresse. 8 High Court, 17 September 2019, Beverly Hills Teddy Bear Company v. PMS International Group Plc (Hacon J.) [2019] EWHC 2419 (IPEC). 9 Case C-728/19 Beverly Hill Teddy Bear Co. v. PMS, removed from the register by Order [2020] ECLI:EU:C:2020:114. 123 972 A. Kur 2.2 Changes Under Regulation No. 2024/2822 With the amendment of the CDR by Regulation No. 2024/2822, the situation has changed. While Art. 11 CDR has remained the same, Art. 110a(5) second sentence CDR has been deleted. The change was only announced in the very last version of the proposal. Somewhat surprisingly, it was not preceded by any (documented) discussion in the legislative bodies, nor does it find any explanation in the preamble or the explanatory memorandum. The reasons for altering the text are therefore not quite clear. The only source known so far to shed light on the matter is the statement by a Commission officer that Art. 110a CDR in its entirety, including paragraph 5 second sentence, was limited to application in the context of EU enlargement, and should never have been employed as a tool for interpreting Art. 11 CDR. 10 In other words, Art. 110a(5) second sentence CDR was intended to clarify that designs previously published in the acceding Member States only enjoy UCD protection if they fulfil the necessary requirements, i.e. if they could have become known in the ordinary course of business to the specialised circles operating in the ‘‘old’’ Member States. 11 Consequently, the Commission officer contended that removal of Art. 110a(5) second sentence CDR was a direct reaction to decisions like Geba ¨ckpresse, 12 which in the Commission’s opinion erroneously employed the provision beyond its inherent limits. 13 There is no need to discuss here whether the Commission’s arguments are convincing. The fact remains that, after removal of Art. 110a(5) second sentence CDR, it is no longer possible to rely on the provision to argue that referring the issue to the CJEU is unnecessary. 3 The Kwantum Judgment 3.1 The Conflict In Kwantum, the holder of the copyright to furniture design by the famous designer couple Ray and Charles Eames filed an infringement claim in the Netherlands against a firm reproducing the ‘‘Dinner Wood Side (DWS) chair’’. For works of applied art such as furniture, Art. 2(7) second sentence of the Berne Convention provides an exception from the principle of national treatment, replacing it with a system of reciprocity. If the work is only amenable to design protection in the country of origin, the same applies in other Member States, irrespective of the national standards otherwise applying. The issue was of relevance because the DWS 10 Statement by Toma ´s Eichenberg (EU Commission) at the ‘‘GRUR Meets Brussels’’ conference, 11 June 2022, reported by Kur (2023). Prior to publication the article was submitted to Mr. Eichenberg for confirmation, which was kindly given. It must be noted that at the occasion, Mr. Eichenberg did not speak under the reservation of stating his personal opinion, but acted as a representative of the Commission. 11 That interpretation was endorsed even prior to the change in Howe et al. (2022), chapter 2, marginal note 2-121. 12 Supra note 7. 13 Statement by Toma ´s Eichenberg, reported by Kur (2023). 123 From ‘‘Local Privilege’’ to ‘‘Global Standard’’: Facilitating Design…973 chair originates from the USA, where copyright protection is not a valid option for articles that are characterised by a conscious (and artful) merger of functional and aesthetic elements. 14 The Dutch Supreme Court therefore referred to the CJEU a number of questions, inter alia whether this was a matter for EU copyright to decide and, if so, whether it would have been necessary to explicitly provide for a reservation in the relevant EU legislation. 3.2 Uniform and Autonomous Notion of ‘‘a Work’’ Since its Infopaq decision, 15 the CJEU endorsed the position that by harmonising the notion of reproduction in the InfoSoc Directive (29/2001), the EU legislators also harmonised the notion of a work. Little did it matter that such far-reaching harmonisation was not intended when the InfoSoc Directive was passed; 16 the CJEU continued to affirm and complement its jurisprudence in a line of subsequent decisions. 17 Pursuant to that case law, a work must satisfy two cumulative conditions, namely, it must be original in the sense that it is the author’s own intellectual creation, and second, the subject matter to be protected by copyright must be expressed in a manner that makes it identifiable with sufficient precision and objectivity. 18 In Cofemel 19 and Brompton, 20 the same criteria were declared to apply to works of applied art. The issue had been contentious before, due to the fact that Art. 17 of the Design Directive (1998/71) and Art. 96 CDR (6/2002), while obliging Member States to accept cumulation of copyright and industrial design as a matter of principle, explicitly left it to the Member States to determine the conditions and extent of copyright protection, including the required level of originality. Without even addressing that reservation or the doubts resulting therefrom, the CJEU contended that the provisions remain unaffected by the harmonisation of copyright allegedly occurring through the InfoSoc Directive. 21 Somewhat more explicitly, the Advocate General pointed out that the deference to the Member States was motivated by the diversity of national systems at the relevant time, and had become obsolete when harmonisation was achieved. 22 14 So-called ‘‘doctrine of separability’’. For details, see Ginsburg (2018), pp. 297–340. 15 Case C-5/08 Infopaq v. DDF [2009] ECR I-06569, para. 37. 16 As confirmed in Commission staff document, SEC(2004) 995, 19 July 2004. 17 Case C-145/10 Painer v. Standard [2011] ECLI:EU:C:2011:798, para. 87; Joined Cases C-403/08 and C-429/08 Football Association Premier League v. Murphy [2011] ECLI:EU:C:2011:631, para. 97; Case C-393/09 BSA v. Ministerstvo kultury [2010] ECLI:EU:C:2010:816, para. 45; Case C-604/10 Football Dataco v. Yahoo! [2012] ECLI:EU:C:2012:115, para. 38. 18 Case C-310/17 Levola Hengelo v. Smilde Foods [2018] ECLI:EU:C:2018:899, paras. 36–40. 19 Case C-683/17 Cofemel v. G-Star [2019] ECLI:EU:C:2019:721. 20 Case C-833/18 Brompton Bicycle v. Get2Get [2020] ECLI:EU:C:2020:461. 21 Case C-683/17 Cofemel v. G-Star [2019] ECLI:EU:C:2019:721, paras. 44–47. 22 Opinion by Advocate General Szpunar, Case 638/16 Cofemel v. G-Star ECLI:EU:C:2019:363, paras. 37, 38. That reasoning is somewhat precarious, as the InfoSoc Directive – on which the CJEU’s assumption of full harmonisation of the notion of a work is grounded – went into force several months earlier than the CDR. The Advocate General considered and discarded that argument as well, pointing out that the respective legislative processes ran more or less parallel, and that, if the legislature had actually 123 974 A. Kur In a number of national jurisdictions, works of applied art had indeed been subject to distinct standards differing from other work categories, and varying between Member States. 23 Against that background, the CJEU’s contention of full harmonisation having been achieved without any legislative measures addressing the point (apart from certain special areas 24 ) was bound to create problems. The unease caused thereby is enhanced by uncertainties surrounding the distinction between copyright and design protection: while the CJEU insists that overlaps between both fields must be limited to ‘‘certain cases’’, the criteria offered for distinguishing between the two fields are theoretical and abstract rather than providing concrete guidelines for practice. 25 This may lead to a situation where the borderlines between design and copyright law, though being upheld in theory, are gradually eroded, so that total cumulation becomes the rule rather than the exception. In that scenario, applying Art. 2(7) Berne Convention would make a real difference for works originating from Berne Member States applying a much higher threshold for copyright prorection. 3.3 Extension to ‘‘Fremdenrecht’’? 3.3.1 Relevance of the Question Despite the criticism raised against the CJEU’s robust pro-harmonisation agenda, it is an accepted fact in practice that the notion of a work, including works of applied art, must be interpreted uniformly and autonomously, following the criteria spelled out in the pertinent case law. Without doubting the validity of that starting point, the question posed by the referring court in Kwantum concerned an additional element, namely whether harmonisation of substantive law also includes the law applying to aliens (in German: Fremdenrecht). Different from private international law determining the law applicable to a given issue, 26 the body of rules forming the law applying to aliens determines whether national law can be relied on by persons or with regard to subject-matter which do not satisfy certain (territorial) requirements. In intellectual property, those rules can be traced back to times when exclusive rights were privileges granted by the sovereign, of which aliens could only benefit, if at all, under the condition of reciprocity. Whereas much of this Footnote 22 continued intended to exempt the field of applied art from the harmonising effect of the InfoSoc Directive, this would have been spelled out more clearly; ibid., paras. 41, 42. 23 See the detailed overview given in Derclaye (2018), on the history and current situation in France, the Netherlands, Greece, the Nordic countries, Germany and the UK (plus Australia, Japan, and the USA). 24 See Art. 1(3) of the Software Directive (91/250; now: 2009/24); Art. 3(1) Database Directive (96/6); Art. 6 Term Directive (93/98; now: 2006/116), concerning photographs. 25 For comments (in English) on Cofemel and/or Brompton highlighting that point, see Inguanez (2020), pp. 797–822; Endrich-Laimbo ¨ck (2020), pp. 264–269; Fhima (2020), pp. 761–767; Kur (2020), pp. 290–300; Schovsbo (2020); for an overview on post-Cofemel court practice, see Derclaye (2024), pp. 121–138. Clarification of the criteria for protection is currently sought in pending Cases C-580/23 Mio v. Asplund and C-795/23 konektra v. USM. 26 In this case: Dutch and Belgian law as the law of the countries for which protection is sought in the underlying dispute, see Art. 8(1) Rome II Regulation (864/2007). 123 From ‘‘Local Privilege’’ to ‘‘Global Standard’’: Facilitating Design…975 has become obsolete due to the nearly global coverage of the Paris Convention, Berne Convention and TRIPS with their principle of national treatment, those rules still play a role for copyright and related rights, firstly, because the latter are not so extensively covered by international agreements ensuring national treatment, and secondly, because the Berne Convention itself reverts to reciprocity in a couple of instances, such as Art. 2(7). 27 3.3.2 The RAAP Judgment The question whether substantive harmonisation also extends to the law applying to aliens was first addressed in the RAAP judgment. 28 The conflict concerned the right of performers and producers of phonograms to claim remuneration for the secondary use of their achievements. While this is a mandatory feature under Art. 8(2) of the Rental and Lending Directive (2006/15), the international law provision on which it is based, Art. 15 of the WPPT, 29 allows WPPT members to deposit a reservation with the WIPO. The option had been used by Ireland (but not the EU). The question therefore arose whether the exercise of the reservation vis-a `-vis performers who were not residents in the EU or the EEA, or whose performances had not taken place there, was compatible with the obligations under the Rental and Lending Directive. The CJEU denied the question. As the Directive does not grant any deference regarding the conditions under which remuneration is paid by the Member States, invoking the reservation was held to disrupt the envisaged harmonisation. 30 The CJEU added that it is permissible in principle, and might even be commendable, to grant such claims only under the condition of reciprocity. 31 However, in view of the fact that this would amount to a limitation of rights which, in principle, are entitled to protection under Art. 17(2) of the Charter of Fundamental Rights (CFR), the CJEU considered it necessary under Art. 52 CFR to anchor a relevant provision in the written law. 32 3.3.3 Application in Kwantum The Kwantum decision 33 runs largely along the same lines as RAAP. At first glance, this is no surprise, as the issues are indeed parallel to some extent. However, a closer examination shows certain differences, of which at least the following is quite substantial. Unlike RAAP,Kwantum did not concern one particular type of remuneration claim, but the more fundamental question of whether copyright can be 27 Other examples are Art. 7(8) concerning the term of protection and Art. 14 ter (3) Berne Convention concerning the resale right. 28 Case C-265/19 RAAP v. PPI [2020] ECLI:EU:C:2020:677. 29 WIPO Performances and Phonograms Treaty (1996). 30 Case C-265/19 RAAP v. PPI [2020] ECLI:EU:C:2020:677, para. 68. 31 Case C-265/19 RAAP v. PPI [2020] ECLI:EU:C:2020:677, para. 84. 32 Case C-265/19, RAAP v. PPI [2020] ECLI:EU:C:2020:677, paras. 85, 86. 33 CJEU C-227/23 Kwantum v. Vitra Collections [2024] ECLI:EU:C:2024:914. 123 976 A. Kur invoked at all. 34 The argument used by the CJEU and the Advocate General, that denying copyright in the DWS chair clashes with the wording and the general rules governing the interpretation of Arts. 2 and 4 of the InfoSoc Directive, 35 is therefore beside the point. This is about whether those provisions apply in the present case, and not about how they must be interpreted. The CJEU’s negligence of the fact that these are different categories of legal rules is rightfully criticised in the literature. 36 This does not necessarily mean, however, that the decision ‘‘rests on feet of clay’’. 37 While it is true that substantive harmonisation must be distinguished from harmonisation of the rules governing application of the law vis-a `-vis aliens, the CJEU is not hindered from considering the consequences of its ruling within the context of the envisaged harmonisation 38 and, more generally, in the light of the primary law-based principle of free movement of goods. Leaving it to national law to apply Art. 2(7) Berne Convention is liable to create obstacles to the free movement of goods between Member States that do grant full protection and those that do not. Arguing that, while such effects may be undesirable, they are a natural consequence of lacking harmonisation 39 ignores that the question to be decided here is exactly whether harmonisation has in fact occurred; the argument amounts to a petitio principii rather than disproving the CJEU’s reliance on the factual connectionand primary law-based logic of synchronisation between the levels of substantive law and the rules governing its application to aliens. It is true that, instead of foreclosing the option for individual Member States to invoke Art. 2(7) Berne Convention, a uniform solution would also result from treating the provision as part of the ‘‘common acquis’’, as suggested in an opinion by the European Copyright Society (ECS). 40 However, similar to what was held in RAAP, the CJEU perceives a problem of fundamental law. As works of applied art are protected in principle by Art. 17(2) CFR, limiting the right in any way needs a basis in written EU law, as postulated in Art. 52(1) CFR. It is true that at this stage of the proceedings the question whether the item satisfies the criteria for copyright protection is a hypothetical one: if Art. 2(7) Berne Convention applies, the 34 Further aspects are listed in the Opinion issued by the European Copyright Society (ESC), see van Eechoud et al. (2024), pp. 1316, 1323: RAAP concerned an obligation under the WPPT of which the EU is a member, whereas it is only indirectly bound to the Berne Convention; unlike in RAAP, harmonisation of the notion of a work did not occur by explicit legislation, but was ‘‘constructed’’ by the CJEU; while Art. 15(3) WPPT only offers an option, Art. 2(7) Berne Convention is formulated as a rule. However, those points do not make much difference: the fact that the Berne Convention only applies via other agreements does not change its binding nature; furthermore, it could hardly be expected that the CJEU recognises a difference between ‘‘explicit’’ and merely ‘‘judge-made’’ harmonisation; and lastly, the rule-like wording of Art. 2(7) Berne Convention does not affect the possibility of granting full protection; see also Case C-277/13 Kwantum v. Vitra Collections [2024] ECLI:EU:C:2024:914, para. 87 (on Art. 351 TFEU). 35 Case C-227/23 Kwantum v. Vitra Collections [2024] ECLI:EU:C:2024:914, para. 68; Opinion of Advocate General Szpunar, 5 September 2024, ECLI:EU:C:2024:698, para. 53. 36 Huckschlag (2025); Hugenholtz (2024a) (concerning the Advocate General’s Opinion). 37 Thus: Huckschlag (2025). 38 Case C-227/23 Kwantum v. Vitra Collections [2024] ECLI:EU:C:2024:914, para. 63, pointing to Recital 6 of the Rental and Lending Directive. 39 Thus: Hugenholtz (2024b). 40 van Eechoud, Metzger, Quintais and Rognstad (2024), pp. 1316, 1325. 123 From ‘‘Local Privilege’’ to ‘‘Global Standard’’: Facilitating Design…977