9 April 2020
Brands update - April 2020 – 4 of 8 Insights
The Advocate General (AG) recently delivered his opinion in the Brompton bicycle case (C-833/18), which concerns the availability of copyright protection especially where there has been previous patent and design protection for a product.
The product in question here was Brompton's well-known folding bike which has been marketed since 1975. The request for a preliminary ruling arose out of copyright infringement proceedings in Belgium involving Brompton and a Korean company, Get2Get. Get2Get argued that copyright does not subsist in Brompton's bicycle, as its shape and features are dictated by purely functional considerations.
The availability of copyright and its interplay with other rights has been considered in a number of recent CJEU decisions, most notably Cofemel (see our article here). That important case made clear that:
This opens the door for copyright to be available for a much broader range of designs and "works" than was previously thought to be the case. It has already been applied by the UK Intellectual Property Enterprise Court in Response Clothing Ltd v The Edinburgh Woollen Mill Ltd  EWHC 148.
The AG's opinion in Brompton bicycle is largely consistent with the CJEU's ruling in Cofemel. The AG advises the CJEU to rule that:
However, the AG then goes on to consider what factors should be taken into account in determining whether a product is exclusively functional, opining that:
If followed by the CJEU, the AG's opinion will be broadly welcomed. The factors to be taken into account in determining "functionality" are broadly consistent with the factors brands lawyers will be familiar with considering when determining whether functional shapes are registrable as trade marks.
One notable difference between the AG's opinion and Cofemel, however, is that the AG considers the subjective intention of the creator of the work to be important in determining whether it achieves an exclusively technical result. This does not seem consistent with the CJEU's decision in Cofemel, which focused on whether a work meets the requirements for "originality" – an objective factor. It will be interesting to see what the CJEU makes of this point when it delivers its judgment in Brompton Bicycle. Either way, it seems that the CJEU has opened the door for the much longer term of copyright protection to be available for a broader array of works including works which have functional elements.