© A. Kur CUMULATION OF IP RIGHTS PERTAINING TO 3D ITEMS – AN “ILLEGITIMATE OFFSPRING“ OF IPR? Annette Kur, MPI Munich

© A. Kur INTRODUCTION: THE PROBLEM In most (European) countries, the appearance of 3D objects, whether functional or aesthetic, can be protected by design, copyright, trademark and/or unfair competition law Protection can be simultaneous or subsequent In case of conflict with competing products, the rightholder will be able to rely on the “strongest“ of the accumulated rights (for instance, the right with the longest duration, after other rights have lapsed) The situation may pose problems –for undistorted competition –under general systematic aspects

© A. Kur INTRODUCTION: THE ANSWER ? Cumulation of rights does not pose a problem per se. Neither competition nor the general structure of IPR are negatively affected as long as –the requirements for protection under the different legal regimes are formulated and applied so as to fully justify the protection granted, and –each one of the rights applied is adequately balanced in itself, in particular as regards the relationship be between the general scope of protection and the limitations It follows e contrario that cumulation can operate as a “magnifying glass“, enhancing the visibility of imbalances which otherwise might remain undetected

© A. Kur CASE STUDY I: SUBSEQUENT APPLICATION OF DIFFERENT PROTECTION REGIMES (UCD/TRADEMARK/UNFAIR COMPETITION) The European Court of Justice (ECJ) has taken a rather critical stand towards trademark protection of 3D items In consequence of that jurisprudence, such signs must, as a matter of principle, aquire distinctiveness through use (“secondary meaning“) before they are registered During the early phase of marketing, such items may however rely on UCD (Unregistered Community Design) protection, if they are new and have individual character UCD protection lapses after 3 years, but during that time, sufficient distinctiveness may have been acquired, so that the item can readily be registered as a mark

© A. Kur CASE STUDY I: SUBSEQUENT APPLICATION OF DIFFERENT PROTECTION REGIMES (UCD/TRADEMARK/UNFAIR COMPETITION To cumulate UCD and trademark protection in the manner indicated above might contradict the ECJ‘s cautious approach towards initial protection of 3D items under trademark law It would be problematic indeed if the requirements for both UCD protection and trademark registration on the basis of acquired distinctiveness were set too low, so that practically any 3D item except for the most banal product design would benefit from consecutive protection Reservations are even stronger when –after the lapse of UCD protection and –absent trademark protection protection is granted on the basis of unfair competition statutes

© A. Kur CASE STUDY I: SUBSEQUENT APPLICATION OF DIFFERENT PROTECTION REGIMES (UCD/TRADEMARK/UNFAIR COMPETITION Practical example: German Fed. Supreme Court, – Jeans Protection against imitation of the “distinguishing elements“ of the garment was granted on the basis of unfair competition, after UCD protection had lapsed.

© A. Kur CASE STUDY I: SUBSEQUENT APPLICATION OF DIFFERENT PROTECTION REGIMES (UCD/TRADEMARK/UNFAIR COMPETITION In the “Jeans“ case, the Federal Supreme Court refused to refer the issue to the ECJ for a preliminary ruling Argument: European design legislation does not bar subsequent unfair competition protection founded on aspects which differ from the grounds on which design protection was based Irrespective of that, Art. 28 EC („free movement of goods“) might come into play if imports were hindered from other EU member states The crucial question in that situation would be whether to prohibition of imports is necessary for protection against dishonest practices (unlikely e.g. if competitor emphasizes the divergent commercial origin by attaching a different label).

© A. Kur CASE STUDY II: SIMULTANEOUS PROTECTION FOR SPARE PARTS UNDER DESIGN/TRADEMARK/COPYRIGHT LAW European design legislation does not incorporate a harmonized rule on protection for spare parts Several member states have introduced a „repairs clause“ allowing reproduction of protected parts for repair purposes A Commission proposal for a repairs clause is pending In anticipation of such developments, car manufacturers try to secure trademark protection for individual spare parts In some countries (in particular: France) spare parts are even protected by copyright Problem: Is it possible to circumvent the repairs clause by relying on cumulative trademark or copyright protection?

© A. Kur CASE STUDY II: SIMULTANEOUS PROTECTION FOR SPARE PARTS UNDER DESIGN/TRADEMARK/COPYRIGHT LAW By contrast to designs (which are not examined as to their substance in nearly all European countries), the distinctive character of spare parts will be examined ex officio before they are registered as marks As a matter of principle, only few parts will pass that test For those (few) parts which are found to be eligible for trademark protection, the crucial questions in a conflict situation will be whether –the part is used “as a mark“ by the alleged infringer –The use is admissible on the basis of Art. 6. lit. b TMD (= use in order to indicate the purpose of a product)

© A. Kur CASE STUDY II: SIMULTANEOUS PROTECTION FOR SPARE PARTS UNDER DESIGN/TRADEMARK/COPYRIGHT LAW In case of copyright protection being granted to spare parts, the situation would be more difficult The issue would come to the fore if a repairs clause were to be introduced in all member states on the basis of the Commission proposal, but some countries like e.g. France would still prohibit the commercialising of parts in their own territory on the basis of copyright As a matter of principle, the right to prohibit any form of reproduction is part of the specific subject matter of copyright, which overrides the rule on free movement of goods, Art. 28, 30 EC However, the ECJ has demonstrated in the Dior/Evora judgment (C-337/95) that copyright protection may have to be curtailed where it hinders the commercialising of products which are legal as such, and where a specific, additional justification for cumulative copyright protection is lacking

© A. Kur CONCLUDING REMARKS The examples have shown that although cumulation does not present a danger per se, legislatures and courts must remain wary about such situations In particular, the respective thresholds for protection should not be lowered so that they become indistinguishable from one another (e.g. in the sense that no more is required under design, trademark and copyright law than that the item for which protection is sought is not “banal“) In addition, some general corrective principle may be needed in order to counterbalance over- protective effects of cumulation In the European context, that role is played inter alia by the principle of free movement of goods.