Copycat behaviour: the nightmare of every designer
It is every designer’s nightmare to design a product with a characteristic or specific form and then a competitor produces a similar product, or at least tries to latch on to your product. In a recent dispute between H&M and Yves Saint Laurent, the Court of the European Union, as part of the European Court of Justice, again addressed the criteria when there is, and when there is not an infringement of a model. Dutch Intellectual property lawyer Martijn Kesler explains.
Protection of a model: filing
A form can be protected both under copyright and under design right. For the form to be protected under design right, it has to have an appearance of a product ‘shown from the filing’. So only a product filed as a model and described as such in the application, can be protected.
A product is one of the requirements for protection
Each item manufactured in an industrial or traditional way is considered as a product. A model is only eligible for protection if it has its own character and is new. To test this, the model applied for is compared to older, similar and filed models.
A new proprietary character is also important
The proprietary character in the meaning of the design right, means that the general impression that the model creates with the informed user should differ from the general impression created by older models. The nature of the product and the scope of the freedom of the designer have to be taken into account.
H&M: infringement of a previously filed handbag
In this matter pending before the Court of the European Union, H&M took the position that the handbag filed by Yves Saint Laurent does not have a proprietary character in the meaning of article 6 of the no. 6/2002 Regulation, and was too similar to a handbag filed previously by H&M. Therefore, Yves Saint Laurent could not file the handbag as a model and the filing had to be cancelled.
The test for infringement: the informed user
The Court of the European Union eventually compared both models and tested these by, as it were, assuming the identity of ‘an informed woman who is interested in handbags as possible user’. This informed woman, as is shown in the landmark ruling PepsiCo/Grupo Promer Mon Graphic, is not just averagely interested, but very attentive, either by personal experience or by her extensive knowledge of the industry.
The models are compared to one another
Concerning similar models, the Court of the European Union found, among others, that the scope of the freedom of designers of fashion articles is such that the chance is less that the differences between these fashion items give a different general impression. Conversely, the less the freedom of designers in developing a model, the larger the chance that minor differences between fashion items is enough to create a general impression for the informed user.
Court of the EU: there is no infringement on a model
Based on the aforementioned, the Court of the European Union concludes that the handbag (i) does not infringe in special features (including the use of leather and ornamental motives) on H&M’s handbag. Also (ii) based on the difference between how the handbag is used daily by the informed user, there is no infringement by the Yves Saint Laurent handbag.
AMS Advocaten specialized in copyright infringement
It is interesting that in the end two reasonably similar handbags do not infringe on one another. This test seems fairly similar to the serious test used to determine copyright infringement. Of course this depends on the circumstances of the case, in which there has to a specific examination of the type of model and the user concerned.