The Deity Shoes case: a question of design activity and the constraints on a designer’s freedom

The footwear brand Deity Shoes sought to enforce their Community Design rights, both registered and unregistered, against Mundorama Confort and Stay Design. However, Mundorama Confort and Stay Design found fault in Deity Shoes’ case, arguing that they should not have design protection in the first place. Indeed, these designs were simply the result of customised elements like buckles and laces from earlier designs included in supplier catalogues.  They did not have ‘genuine design activity’ or ‘intellectual effort’. This posed the question of whether these concepts were truly necessary for community design protection.

In light of this, the Spanish courts, where the case was first heard, decided to stay the proceedings and refer  the following questions to the Court of Justice of the European Union (CJEU) in order to determine the matter:

1. Does there need to be ‘genuine design activity’ and ‘intellectual effort’ to obtain Community Design protection?
2. Could customisation of designs from the supplier catalogues be seen as having individual character?
3. Is a specific degree of customisation necessary for there to be authorship?
4. Do fashion trends restrict a designer’s freedom?

1. Legal Framework

To fully explore the implications of the final decision, it is necessary to understand the key legal provisions surrounding the requirements for Community Design protection and those that were ultimately considered in the decision. The source of these provisions is Regulation (EC) No. 6/2002 of 12^th December 2001, which seeks to encourage innovation (recital 7).

The key requirements for protection are that a product must be a design and that it must be new and have individual character (article 4)

Specifically, a design should protect the appearance of a product (Article 3), while individual character means that the design produces a different overall impression on the informed user, taking into account the designer’s freedom (Recitals 14 and 19 and Articles 6 and 10). Novelty requires that no identical design must previously have been made available to the public (article 5). The right to the design automatically  lies with the designer or his successor (article 14)

2. Advocate General Opinion

Before the CJEU provided a  final ruling, the Advocate General provided an Opinion on this matter below.

1. The First and Third Questions

The process of how the design was created or ‘intellectual effort’ of the designer  is irrelevant when it comes to Community Design protection, which simply protects appearance.

The Advocate General also argued that the two conditions of novelty and individual character are exhaustive, meaning that ‘genuine design activity’ and ‘intellectual effort’ are not actually considerations. These elements lean more towards Copyright protection,  which seeks to protect originality.

Case law further dictates that protection cannot be denied due to constraints like technical function, highlighting that design activity and intellectual effort are not necessary for protection.

Moreover, the role of article 14 is to determine who the designer is, rather than to consider whether there is a link between “design” and “designer’ as there is between “work” and “author” in Copyright protection.

2. The Second and Fourth Questions

As long as Deity Shoes’ customised designs, produced a different overall impression, they would have individual character, in line with this requirement.

The Advocate General also highlighted the fact that we must consider technical constraints and standardisation of designs in order to understand the designer’s freedom and to qualify the assessment of individual character overall. The more restricted the designer’s freedom the more likely small differences will allow protection. If this was not the case, then it would be very difficult to obtain protection and those who did obtain protection could potentially obtain a monopoly, which would stifle creativity.

When we consider the fashion industry specifically, this sector  would particularly suffer if fashion trends restricted design freedom, as the sector thrives on creativity and innovation. It follows that, although fashion trends can sometimes be considered in assessing the overall impression in an individual character assessment, they cannot be given the same weight as design/technical trends in restricting design freedom.

3. CJEU

The CJEU considered the questions of the referring court and reached a conclusion in relation to each of these.

1. The First and Third Questions

The CJEU ultimately argued that, the concepts of ‘genuine design activity’ or ‘intellectual effort’ are not necessary for protection as a community design. The key considerations are appearance, novelty and individual character, considering the designer’s freedom. The concepts of ‘genuine design activity’ and ‘intellectual effort’ lent more towards Copyright protection.

In terms of authorship, ‘the designer [does not undergo a specific process to obtain protection]’, so a specific degree of customisation is unnecessary.

2. The Second and Fourth Questions

Regarding the second and fourth questions, the CJEU stated that the customisation of designs, such as those produced by Deity shoes, could have individual character. This was, because individual character is assessed through ‘the relationship between those designs and other prior designs’ . In this way, it would be possible for a community design to be ‘composed of various prior designs where taken individually the resulting design does not produce the same overall impression’.

The CJEU further agreed with the Advocate General’s opinion that the ‘features linked to fashion trends differ from those linked to the technical function of the product or to applicable legal requirements’ and so fashion trends cannot limit the freedom of the designer, which are considered from the perspective of the informed user. This would not suit the innovative and evolving nature of fashion overall.

4. Practical implications

Ultimately, there is no need for ‘genuine design activity’ or ‘intellectual effort’ for community design protection, clearly distinguishing community designs from Copyright, which does require originality. In light of this, customisation such as that completed by Deity Shoes can obtain Community design protection. This highlights that Community designs are better suited to products that are more functional and can be mass produced

The distinction between design and copyright protection, is something that would be important for designers to consider regarding any IP Strategy.

This article was prepared by Trade Mark Attorney Melissa Buamah.