The Lisbon Court of Appeal decided an action in which the plaintiff claimed copyright and trade dress protection for a pen, specifically the Stabilo Pen 68.
Citing the interpretation given by the EU Court of Justice in the the Cofemel judgement, the Court of Appeal found that copyright protection could not be recognized since the Stabilo Pen 68 was not considered an original work, in the sense of being an intellectual creation of their author.
Schwan - Stabilo Schwanhausser Gmbh & CO KG filed an action against Branco e Negro, Lda and Clave Denia, SA regarding the sale of certain pens in their online and physical Ale Hop shops. The plaintiff claims infringement of copyright on the Stabilo Pen 68 and unfair competition (based on product imitation and parasitic competition), seeking the prohibition of sales and damages.
The Stabilo Pen 68 is a coloring felt-tip pen marketed since 1968. It has a hexagonal shape and white edges, with the cap and the color of the wider sides of the pen matching the coloring color and alternating with the white stripes.
The defendant submitted that the claims are groundless since the plaintiff has no intellectual property rights and there was no unfair behavior. The IP Court agreed with the defendant and rejected the claims.
The Stabilo Pen 68
The defendant’s products
Court of Appeal
On appeal Schwan - Stabilo alleged that the absence of any form of industrial property right protecting the format and/or appearance of the Stabilo Pen 68 such as a 3D mark or a design right, does not exclude the possibility of copyright protection in accordance with the Cofemel judgment of the Court of Justice. The appellant mentioned in particular that the distinctive white edges of the Stabilo Pen 68 are the result of a “creative exercise and freedom” and not functional characteristics.
The higher court confirmed the findings of the 1st instance IP Court.
The Court of Appeal started by noting that the Portuguese legislature established the principle of cumulation of copyright law protection and design law protection, replicating in part article 17 of the Directive 98/71/EC thus leaving, to doctrine and case-law, the task of interpretation in accordance with the Court of Justice decisions namely the Flos case (C-168/09), the Infopaq International case (C-05/08) and the Cofemel case (C-683/17).
The court noted also that according to the Cofemel case, designs may benefit from copyright protection only if they are classified as “works” for the purposes of Directive 2001/29/EC, which implies two cumulative requirements: (i) it must be an original object, in the sense of being an intellectual creation of the author himself, reflecting his personality, expressing his free and creative choices; (ii) it must be an object identifiable with sufficient precision and objectivity. The CJEU stressed that the protection of designs, on the one hand, and the protection conferred by copyright, on the other hand, pursue fundamentally different objectives and are subject to different regimes and which are not mutually excluded, so that the fact that a design generates an aesthetic effect does not in itself make it possible to determine whether that model constitutes an intellectual creation which reflects the freedom of choice and personality of its author. The court conluded that “it has therefore become clear that not every design may benefit from the protection of copyright, but only those which, in the light of copyright, can be classified as works".
Thus the court considered that notwithstanding the visual and aesthetic effects that characterize the Stabilo PEN 68 (arising from their shape, colors and, in particular, the white stripes), the pens in question are not original, in the sense of being an intellectual creation of the author, reflecting his freedom of choice, his personality, his particular perception of the world, nature and things, expressed (with precision and objectivity) through the creative act, transcending the mere utilitarian perspective.
Trade dress and unfair competition
The court accepted that in general the imitation of the external characteristics of a product, that is, its visual presentation (including “words, pictures, colours and shapes”), may amount to unfair competition because it may be a free ride on the competitor's image, able to create confusion in the mind of the public.
However in the presente case, the plaintiff’s products have other features that prevent any possibility of confusion namely the word mark (STABILO) engraved on the pens themselves and on their packaging. This and their writing characteristics allows sufficient differentiation for consumers. Furthermore the plaintiff was unable to obtain registration of a 3D mark since EUIPO considered that the visual appearance of the pens – namely the hexagonal shape and the white lists – are not sufficiently different from other pens on the market. Consequently all claims were rejected.
The judgement of the Court of Justice of the European Union (CJEU) issued on 12 September 2019 in case C-638/17 (Cofemel — Sociedade de Vestuário SA v G-Star Raw CV) ruled that a national legislation cannot grant protection under copyright to models such as items of clothing that beyond their utilitarian purpose produce a specific visual aesthetic effect.
The ruling addresses the complex overlaps between design and copyright law in the case of useful articles in a referral from the Portuguese Supreme Court previously reported here.
In the question answered by the CJEU the Portuguese Supreme Court asked if Article 2(a) of Directive 2001/29/EC precludes a national legislation — in the present case, the provision in Article 2(1)(i) of the Portuguese Copyright Code — that confers copyright protection on works of applied art, industrial designs and works of design which, in addition to the utilitarian purpose they serve, create their own visual and distinctive effect from an aesthetic point of view.
In a nutshell the court said: yes it does because an aesthetic effect is intrinsically subjective and therefore the design or models in question do not meet the conditions that must be satisfied for subject matter to be classified as a ‘work’, namely sufficient precision and objectivity.
The European concept of protected ‘work’
In line with former case law the CJEU started by mentioning that in view of the need for a uniform application of EU law and the principle of equality, the concept of ‘work’ protectable under copyright law must normally be given an autonomous and uniform interpretation throughout the European Union.
Two cumulative conditions must be satisfied for subject matter to be classified as a ‘work’ within the meaning of Directive 2001/29
1) First, the subject matter concerned must be original in the sense that it is the author’s own intellectual creation – it is the intellectual creation of the author if it reflects his personality and expresses his free and creative choices in the production of that work.
2) Secondly, only something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of Directive 2001/29. This implies that the subject matter at issue is identifiable with sufficient precision and objectivity (case Levola Hengelo, C‑310/17, par. 40).
Principle of cumulation, law diversity and competition
The CJEU referred that the European legislator has opted for a system whereby the protection afforded to designs and copyright is not mutually exclusive. This means that a principle of 'cumulation' of the protection of designs on the one hand with copyright protection on the other applies. Consequently the CJEU does not exclude that models or designs may be considered works if the 2 cumulative requirements are met.
However the protection of designs or models aims at objects (products) that, although new and individualized, are utilitarian and can be mass produced. This protection is intended to be applied for a limited but sufficient period to enable the recovery of the investments made in the creation and production of such objects without, however, hindering competition excessively. As to the protection associated with copyright, whose duration is very significantly longer, is reserved for objects that deserve to be qualified as ‘works’.
For these reasons, granting copyright protection to an object protected as a design or model cannot undermine the respective purposes and effectiveness of those two types of protection.
It follows that, although protection of designs and protection associated with copyright may, under Union law, be accorded cumulatively to the same object, such cumulation may be permitted only in certain situations.
The essence of the judgement is that utilitarian objects, such as clothing, even one that has a striking aesthetic effect, is not endowed with originality that deserves copyright protection. The aesthetic effect results from a “subjective sensation of beauty experienced by each person looking at that model” the CJEU considered. Consequently, such an effect of a subjective nature cannot in itself characterize the existence of an identifiable object with sufficient precision and objectivity.
Nevertheless our reading is that the CJEU has welcomed the Advocate General's warning about the harmful consequences of excessive copyright protection of designs or models.
By stressing the different purposes of design or model laws protecting current and mass-produced utility objects, and the copyright laws protecting original ‘works’ and by considering that cumulative protection can only be allowed in certain situations (par. 52), the CJEU has in fact limited future application of copyright protection for utilitarian designs or models.
Portugal has adopted Law 31/2019 published on 3 May 2019 that regulates the use of personal digital devices and allows the digital reproduction, in images, of documents, in public libraries and archives. The new law applies from 1 June 2019.
Digital devices for personal use, for the purposes of this law, include, but are not limited to, laptops, tablets, data storage media, audio playback players and headphones, digital mobile phones and digital still cameras.
The law allows the use of personal digital devices for the digital reproduction of documents in the reading rooms of public libraries and archives, without any added costs.
In view of potential copyright issues, the reader may only collect the images and digital reproductions for private use, which excludes any other form of use, such as their public distribution or commercialization. According to the law any infringing use of copyright-protected works implies the reader’s liability only and cannot affect the public institution that provides access to the work.
The public libraries and archives should require a registration of the digital devices and may impose restrictions on their use depending on the degree of degradation of documents, as well as arising from the need for preservation and restoration of documents, or in cases where access is available through a free access digital repository.
On 2 May 2019 the Advocate General Maciej Szpunar presented his conclusions to the European Court of Justice in the case C‑683/17 Cofemel – Sociedade de Vestuário, SA v. G‑Star Raw CV.
The case was referred by the Portuguese Supreme Court of Justice that asked for clarification on the interpretation of the InfoSoc Directive (Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society).
Facts in main proceedings
The request for preliminary ruling of the CJEU originates from the appeal proceedings before the Portuguese Supreme Court of Justice against a verdict of the Lisbon Court of Appeal (268/13.2YHLSB.L1-7, dated 21-02-2017). In its judgment the Court of Appel (CoA) examined whether certain outfit items (sweatshirts, t-shirts and jeans) should be considered works protected by copyright.
The claimant (G-Star Raw CV) alleged that the defendant (Cofemel) was imitating some of its products, namely the G-Star Rowdy model for t-shirts and sweat shirts, and the G-Star Rotor Straight jeans, that should be considered protected by copyright (seen below on the left with the Cofemel product on the right).
Although the judgment received a dissenting vote from one of the three judges, the CoA affirmed that the products in question had an artistic nature thereby confirming the 1st instance decision which had upheld the claim. The CoA said:The innovative and original concept of the pieces of clothing in question establishes an intellectual creation that goes beyond a simple industrial practice, constituting a concept intellectually processed with special and laborious technique, emphasis and imagination, generating a visual effect that is striking from the esthetic point of view.
The degree of overall similarity between the items seems to have impressed the CoA when the court criticized the appellant's argument: “having merely copied the intellectual creation on which others had invested”, now requires a high and highly qualified understanding of the artistic requirement for justifying the clear imitation to which it deliberately and profitably devoted itself”.
The question essentially asked by the Supreme Court is: if a new object was designed mostly for a functional or useful purpose could it be protected by copyright? And if so, are useful articles subject to stricter requirements for copyright protection, namely the level of originality required, in comparison with the purely artistic works?
According to some scholars, the Portuguese law copyright protection for works of applied art is subject to a stricter originality requirement. The law refers specifically that protection is recognized to works of applied arts, industrial designs and design works “which constitute artistic creation” therefore suggesting that only some objects will meet the test.
This question becomes typically relevant in litigation where the claimant’s products lack protection provided by design law, namely through design registration, because such protection is not effective or has lapsed.
The AG Szpunar concludes that the EU copyright law as interpreted by the CJEU protects works that are original in the sense that the work reflects an intellectual creation of its author and provided that the subject matter at issue is identifiable with sufficient precision and objectivity.
Furthermore he adds that Article 2(a) of the InfoSoc Directive precludes industrial designs from being protected only by copyright if they present an added artistic character, which goes beyond what is normally required of other categories of works. Therefore the AG proposes that the normal originality requirement applies to utilitarian designs or works of applied arts.
Finally, although noting that the finding of a possible infringement, entirely lies within the jurisdiction of the national court, the AG seems inclined to disagree that the G-Star outfit items are eligible for copyright protection. More generally, he noted: in the event of a request for the protection of a design or an industrial model by copyright, the national court must take into account the specific objectives and mechanisms of this right, such as the protection not of ideas but of expressions and criteria for the assessment of a infringement of exclusive rights. On the other hand, the national court can not apply to copyright protection the specific design protection criteria.
The overlaps between design and copyright law in the case of useful articles remain a complex area of intellectual property law. We will wait for the CJEU ruling and the final Supreme Court decision with interest.
On 27 November the Portuguese Council of Ministers approved a draft law on permitted uses regarding works and other materials protected by copyright and related rights for the benefit of persons who are blind, visually impaired or otherwise print-disabled.
The law implements Directive (EU) 2017/1564 which adopts the Marrakesh Treaty in the EU law. The Marrakesh Treaty is a WIPO administered treaty that improves the availability and cross-border exchange of certain works and other protected subject matter in accessible formats for persons who are blind, visually impaired or otherwise print-disabled. Essentially the treaty requires rules establishing exceptions for uses, works and beneficiary persons covered by that treaty.
Surprisingly the EU Commission had initiated proceedings for infringement against 17 Member States, including Portugal, for non-compliance with the said Directive on 26 November just one day earlier.
The new and still unpublished law further decriminalizes the unauthorized public communication of commercially edited phonograms and videograms in Portugal. The decriminalization goes along with the creation of an alternative regime of fines of administrative nature for encouraging a speedy restoration of legality. Apparently the decriminalization follows a consensus existing among the most representative associations of users and the majority of the entities that represent the right holders.
Last June 22nd the Lisbon Court of Appeal confirmed the decision of the 2nd Section of the Intellectual Property Court (“IPC”), which refused the registration of the national trademark Guaraná Brasil (figurative). The decision was published in the Bulletin of October 18th, 2017.
This case shows that in a dispute regarding trademarks only, it is possible to succeed in claiming copyright protection over the figurative element of word and device trademarks.
In July 2001 Unicer Bebidas de Portugal SGPS, SA, filed the trademark application no. 357.798 Guaraná Brasil to cover guaraná drinks from Brasil in class 32 which had the following represention:
The said application was opposed by Companhia Brasileira de Bebidas SA (now Ambev, SA). The opponent filed the national application no. 358.312 for the mark Guaraná Brahma (figurative) in August 2001:
The decision at issue rejected the earlier application of Unicer and granted the application lodged by Ambev. On appeal to the 1st instance court, Unicer argued, among other points, that the opponent was not entitled the right to the trademark’s device, since he was not the copyright owner regarding that image. The question remained to know who the owner of the copyright over the device included in the trademark no 357.798 was.
The IP Court judgement
The IPC decision begins by stating that, as a rule, the author - that is, the intellectual creator of the work – is the holder of the exclusive right to benefit from and use the work, in whole or in part, meaning that he has the legal power to disseminate, publish and economically exploit the work. It also the author who, likewise, grants the authorization of use or exploitation to third parties and, if he wishes to, to transfer his patrimonial rights covered by his copyright.
In this case, the opponent succeeded in proving his copyright on the device included in the trademark mark 357.798. A substantially similar image had been used as a label for drinks by the opponent in Brazil, long before the date of the opposed trademark application in Portugal.
The labels are as follows:
Label used by the Appealed party in Brazil Label for marketing in Portugal
The proof regarding whom has commissioned the work (which pointed to the opponent) and the proof made of the assignment of the device’s copyright [patrimonial right] in favor of the opponent, was essential to reach this conclusion.
Unicer claimed copyright over the device for the work’s adaptation to Portugal (that is, by the inclusion of the word Brazil instead of Brahma). However it was not proved that the appellant had commissioned any work, namely the execution of the label or of the image’s adaptation to Portugal. The intervention of the appellant was not deemed to be decisive. Furthermore the Court stated that the new device could not qualify as an original work because it did not consist of a “personality mark resulting from the author’s effort”, since the signs were the almost the same in their device elements. Consequently, the small modification of the text, from Brahma to Brazil, was considered not to bring any originality.
Risk of confusion
Finally, the Court held that, since the differences between the signs are practically none, there is a likelihood of confusion and association between the goods and services offered and provided by the two companies and, consequently, the possibility of practice of acts of unfair competition.
The Court of Appeal fully upheld the judgment.
The present case demonstrates that it is possible to invoke copyright over the device element of word and device trademarks within disputes regarding trademarks and where there is a claim of imitation or of likelihood of confusion between signs.
It also recalls that it is important to substantially prove the commission of the work or the development of the device by the author, in order to determine who the holder of the copyright of such device is. Moreover, it reminds us how important it is to gather written proof of the work’s commission or evidence supporting that such work was developed within a contract of employment, for instance, and also to keep written proof regarding the transfer of the patrimonial rights included in copyright (which are associated with economic exploitation) by the intellectual creator to a third party, which shall respect formal requirements.
It recalled us, albeit indirectly, that it is important to pay attention to the formal requirements for a transmission of patrimonial rights included in copyright (which, in the Portuguese case, must be made by a public deed), in order to be able to argue, at the right moment, a possible failure in such transfer procedure which can lead to its invalidity due to lack of form.
On June 24, 2016 the referendum results in the UK were in favor of leaving the EU. It is an unprecedented situation that potentially affects all fields governed by European Union law. At this point there is still a great uncertainty on what are the following steps.
1. The decision to leave the European Union is not an automatic consequence.
For any such decision materializes, the specific procedure laid down in Article 50 of the EU Treaty will have to be observed. First, in accordance with Article 50, the Member State which decides to withdraw from the Union must formally notify its intention to the European Council. Secondly, the EU and that Member State will have to negotiate and conclude the withdrawal agreement, which will establish the framework for its future relations with the EU. To this end, the Council shall take a decision to authorize the opening of negotiations, nominating the Union’s negotiator or the leader of the negotiating team. The final text of the withdrawal agreement must be approved not only by the Council (by a qualified majority) but also by the European Parliament.
2. Leaving the European Union is a lengthy process.
According to the abovementioned Article 50, the Treaties only cease to apply to the State in question from the date that the withdrawal agreement enters into force or, failing that, two years after notification of the intention to leave. Considering the fact that the situation is unparalleled and involves complex negotiations, the whole process could take more than two years. The European Council, with the agreement of the Member State concerned, could decide unanimously to extend this period. This means that the practical implementation of an EU exit may take more than two years, either because all of the parties have agreed as such and/or the deadline is extended by the Council. Until the actual date of departure of the EU, all EU law, including primary and secondary legislation, will continue to apply as normal in the UK.
3. Consequences in the area of intellectual property.
This is a first analysis of the consequences of a possible exit from the UK in the intellectual property field, where inevitably there will be profound changes due to the existence of unitary rights regulated uniformly throughout the EU.
Trademarks can be protected in the UK by a national or international registration (Madrid system), or through the European trademark registration (EUTM) and there will be no immediate change in relation to the registration of EUTMs or the legal enforcement of European trademark rights in the UK. However, the EUTMs depend on European regulations that will no longer apply as from the UK’s departure date. One obvious consequence will be that the registrations of EUTMs applied for after the departure date may not take effect in the UK. As to the registrations of EUTMs that are granted or applied for before the date of UK’s departure their future is still uncertain. It is likely that there will be a legal mechanism to allow the conversion of EUTM to national trademarks, keeping the original priority date of EUTM. In this case, the converted marks would be subject to the national law of the United Kingdom, implying in particular that the genuine use of the mark in another EU country will not be enough to maintain the trademark right in the UK. The transition of existing or pending EUTMs will certainly be one of the topics to deal with in the withdrawal agreement.
The protection of registered and unregistered Community designs will also cease to apply in the UK on the departure date. It is uncertain what will be the status of existing Community design rights on the departure date. It is likely that there will be a transitional solution similar to the one which will apply to EUTMs.
Until the transition rules are defined and in order to avoid legal uncertainty, it is appropriate to consider the protection of trademarks or designs in the UK at a national level, namely using the WIPO international registration systems.
Brexit will have no impact on European patents since the European Patent Convention is a separate international treaty and not EU law. As usual, the European Patent Office will continue to grant European patents that can be validated and enforced in legal proceedings before the UK courts.
The Unified Patent Court and the Unitary Effect
The legislative package which forms the basis for the unitary effect of European patents in the EU and the establishment of the Unified Patent Court (UPC), and was estimated to enter into operation in 2017 is now affected by major uncertainties. The process to ratify the UPC Agreement was underway in the UK but now appears unlikely to occur due to political constraints arising from Brexit. It is more likely that Brexit would, at the very least, involve amending the UPC agreement and postponing the whole project for several years.
If it is confirmed that European patents may not have unitary effect in the UK and that the UPC’s jurisdiction does not extend to the UK, it will strongly affect the interests and feasibility of the Patent Package, since the UK is a substantial part of the protection strategy of European patent owners (with approximately 50% of European patents being validated only in the UK, Germany and France).
Brexit will not immediately affect the area of copyright since there are no uniform EU rules for copyright. Nevertheless the UK’s copyright law is in many aspects harmonized by European directives and case law of the European Court of Justice. Harmonization with the current EU legislation will remain as long as the British legislature does not introduce any changes. However, the UK will not be able to refer questions of interpretation to the European Court of Justice and of course where the EU adopts new directives the UK will no longer be obliged to implement them.