When academics help shape IP law: the case of designs
Anastasiia Kyrylenko · Journal of Intellectual Property Law & Practice · 2022
Whilst design lawyers across the European Union (EU) are waiting for the European Commission to present its proposal to review the Design Directive and Design Regulation, this editorial looks 30 years back to see how the EU design system was shaped by a group of visionary academics.1 The initial discussions on what would become Directive 98/71/EC and Council Regulation (EC) No 6/2002 began in the late 1950s, when the then Commission of the European Communities established three Working Parties to study the eventual harmonization of patent, trade mark and design law. The Working Party on designs not only recommended creating a supranational design right but also concluded that harmonization of national design rights would be challenging due to countless divergencies between the Member States. At that time, the discussion did not progress further. In the late 1980s, with the progressive strengthening of the then European Community single market, the need for a harmonized design framework became more pressing. Several separate groups of academics began working on the drafts of design legislation. All of them did this voluntarily and without instructions from the Commission. In 1988, a group of Italian scholars proposed a system in which the legal protection of designs would be as close to copyright as possible. They were named after the city of Treviso, where the preparatory meetings were held. In particular, under the proposal of the Treviso Group, designs would not require registration. Italy’s textile industry welcomed such a proposal, precisely because of the lack of a formal registration requirement. The French Patent Office and World Intellectual Property Office also created working groups to draft a new design legislation. In parallel to this, the Max Planck Institute (MPI) in Munich also launched its working group, known as the MPI Group. The European Patent Convention and the EU trade mark legislation (the first directive was adopted in 1988) were the starting points for those academics’ work, as they had been previously involved in the drafting of such texts. The MPI group suggested departing from the existing dichotomy of legal protection for designs. Instead of choosing between a ‘patent approach’ (where designs would be registered subject to substantive examination) and a ‘copyright approach’ (where designs would be only protected against direct copying), they recommended developing a separate, special regime instead. It was named the ‘design approach’. The MPI group sought to develop provisions that would establish a new, pan-European regime for the legal protection of designs (rather than simply combining separate elements of the national systems of each Member State, as it is often done in the EU acquis). Although for the most part, the declared goal was achieved, one can also trace a significant influence of German law in some of the provisions. The MPI group also believed that a market-oriented perspective was needed for the design system. That is, ‘saleable’ designs, which differ from the previously known ones in a market-relevant manner, would be protected. This crystallized itself in a new criterion for protection, suggested by the MPI group: individual character (Eigenart in the original German draft). It would act as an additional qualitative step to the requirement of novelty. For some commentators, Eigenart would lie in close proximity with the criterion of Eigentümlichkeit, which already existed in German law. During subsequent revisions of the draft, the Commission added the notion of ‘informed user’—a legal fiction, from whose point of view the individual character ought to be examined. Yet, according to the authors of the MPI proposal, the creation of an Unregistered Community Design (UCD) right would be the most innovative feature of the text. The proposal to introduce an UCD was based on Marianne Levin’s PhD research, carried out in the late 1980s. There, Levin analyzed the national regimes of design protection in European countries and concluded that direct copying was one of the most common problems for the fashion industry. The proposed model of unregistered designs was also inspired by the earlier practice of the German Federal Court of Justice, which offered protection to fashion articles under unfair competition law. Such protection was granted for two fashion seasons (that is, one year) from the moment of presenting the corresponding clothing or accessory. The MPI group suggested a 2-year protection for UCD, so as to grant sufficient time to recoup investments. It was subsequently increased to 3 years. Other aspects would remain unharmonized in the MPI proposal, due to very different views on the matter in the Member States. For instance, the MPI group would only marginally regulate the cumulative protection under design and copyright laws of the same object. The authors believed that the introduction of UCD would address the designers’ need and they would not resort to copyright law. Another issue, which was left out of the proposal, is that of design protection for spare parts. The MPI group’s view was that the limitation concerning designs, which are dictated by technical function, should be sufficient to avoid monopoly in the aftermarket. In 1990, the MPI group presented its text to the Commission officials, who supported and used it as a basis during further discussions with the Member States. In June 1991, the Commission published the Green Paper on the Legal Protection of Industrial Designs. It reflected most of the provisions advanced by the MPI group. In the following years, the Commission presented its proposals for a Design Directive and a Design Regulation. However, their adoption was stalled for a long time due to conflicting views of EU Member States, mostly with regard to the spare parts’ issue. It was only in 1998 that Directive 98/71/EC on the legal protection of designs was adopted. It was then followed in 2002 by Council Regulation (EC) No 6/2002 on Community designs. More than 30 years later, the EU design system remains a well-functioning one, with only a few preliminary referrals to the Court of Justice. The success of Design Directive and Design Regulation was recognized by the 2016 Legal review on industrial design protection in Europe, a preliminary analysis aimed at setting grounds for the future revision of design legislation. The EU also includes norms on design protection in EU trade agreements, thus expanding this model internationally. Of course, although a very remarkable one, this is not the only example where researchers influence policy-making in the EU. At the judicial level, Advocate Generals rely on academic works in their Opinions and scholars are regularly invited to prepare ex ante and ex post assessments of new legislation. More recently, both the European Patent Office and the European Union Intellectual Property Office launched scholarships to support research activities in the area of intellectual property (IP). Through this editorial, I would thus like to celebrate the efforts of all those academics that are behind the EU IP system.