Invalidity of a design due to copyright infringement and interception of such intellectual property rights
There is a gray area of protection for works of applied art, either by copyright or by design, two intellectual property rights which have different protection criteria.
One of the main differences is that with copyright, a work does not require registration to be protected, whereas the design or model must be registered to ensure its protection. Copyright protects the intellectual work (artistic or literary), which is the fruit of creative work resulting from the human intellect and externalized to the world. Design protection encompasses the appearance of all or part of a product resulting from the characteristics, in particular, of the lines, contours, colours, shape, pattern, texture and/or materials of the product. itself and/or its ornamentation.
Although novelty and individual character are requirements for design protection in both European Union and Chinese law, the intellectual property offices of these jurisdictions do not analyze these requirements to grant protection, which will only be analyzed in the event of invalidity proceedings after the granting of the designs.
Due to the overlap of these intellectual property rights that a particular work or product may receive, a work may even be grounds for invalidation of a Community design, which has been registered in violation of that work protected by the copyright.
Invalidity of a design due to copyright infringement
Article 25(1)(f) of the Community Design Regulation (EC) No 6/2002 regulates this matter and the request for a declaration of invalidity of a Community design must fulfill the following conditions :
The applicant must be the owner of the prior copyrighted work;
Proof that the applicant is the owner of the earlier copyrighted work (Article 28(1)(b)(iii) of the Community Design Regulations) – this work has been used or disclosed, as the case may be, under the name of the applicant before the filing date or the priority date of the Community design;
Representation and notices identifying the copyrighted work;
Provisions of national law that protect the copyrighted work claimed by the claimant, including, if necessary, court decisions and/or academic writings;
Elements establishing the content of the national legislation whose application the applicant requests, including, where applicable, court decisions and/or academic writings;
Elements demonstrating that the applicant fulfills the necessary conditions, in accordance with this law, to have the Community design invalidated or its use prohibited by virtue of its prior copyright.
By bringing together these elements, the Invalidity Division of the European Union Intellectual Property Office (EUIPO) will analyze whether the invalidity applicant is the owner of the invoked copyright and whether the unauthorized use of a work protected by the copyright laws of a Member State Member State, as interpreted by the courts of that Member State, has occurred. If both circumstances are confirmed, the Invalidity Division declares the Community design invalid.
The invalidity application for a Community design based on copyright infringement does not apply to cases in which the ownership of the Community design is disputed, in particular where the essential argument of the invalidity applicant is that the Community design was not created by the registered owner but by the invalidity claimant or his employee.
It should be noted that Article 14(2) CDR provides that where a design is developed by an employee in the performance of his duties or following instructions given by his employer, the right to the design community belongs to the employer, unless otherwise agreed or specified under national law. In this sense, the EUIPO is not competent to determine which of the parties is the legitimate owner of the contested Community design since this competence lies with the national courts.
In China, a design patent can also be invalidated on the basis of copyright infringement, because the Chinese Patent Law stipulates in Article 23 that a patented design shall not conflict with the legal rights already acquired by others before the filing date, copyright being understood as a legal right under Chinese copyright law. It should be noted that the Chinese system is moving towards harmonization of rights with other jurisdictions, namely the European Union, the United States of America, Japan, South Korea and international treaties.
Product qualified as a work to be protected by copyright
Still on the interrelationship between copyright and design law, it should be recalled that, for the case law of the European Union, the aesthetic effect of a product does not in itself make it possible to determine whether this product constitutes an intellectual creation reflecting the freedom of choice and the personality of its author and thus fulfills the originality/creativity requirement of copyright.
Chinese jurisprudence, only a few years ago, required at least for an object for which an alternative instrument of protection existed, such as the protection of the design or model if an object of applied arts was disputed, the expression of a degree particularly high degree of creativity that distinguished those works from the subject matter protected under those alternative instruments (e.g., design or model).
However, this extraordinarily high degree of originality has been softened, notably by the Third Amendment to the Copyright Act, in 2020, which amended section 3 stating that any “intellectual achievement” can now be protected in as a work, a much broader term than the previous “creation”, in that it is now clearer that anything requiring intellectual work can be protected without having to meet certain levels of artistry. According to this much broader definition, more creations will be assimilated to “protected works” and alleged infringers will find it more difficult to deny the character of a work, which leads, in a way, to the restriction of access to the culture and creative freedom.
In China, the legislation adheres to the traditional copyright system in that it is centered on the author of the work, although it has some approximations to the copyright tradition, so it ends up be a hybrid system.
With regard to the protection of copyright within the framework of the traditional copyright system and on the basis of the agreement established for more than a decade in European case law, it should be emphasized that the legal protection of the work by copyright stems from respecting the creative requirements of the human intellect, creativity and outsourcing, and it is relevant to mention the decision of June 11, 2020, in the Brompton Bicycle case, judged by the Fifth Chamber of the Court of Justice of the European Union (CJEU).
This decision confirmed that copyright protection applies to a product (folding bicycle) “the shape of which is, at least in part, necessary to obtain a technical result, where this product is a work original resulting from intellectual creation, in that, through this form, its author expresses his creative capacity in an original way by making free and creative choices so that this form reflects his personality, which is up to the jurisdiction national court to verify, taking into account all relevant aspects of the dispute in the case main proceedings”.
In this sense, an object which satisfies the condition of originality may benefit from the protection conferred by copyright, even if its realization was determined by technical considerations, provided that this determination did not prevent the author to reflect his personality in this object by making free and creative choices.
With regard to intellectual property in general, it is concluded that, despite some differences, the Chinese system is moving towards the harmonization of rights in accordance with the European Union and, in the case of designs, even with the United States of America, Japan, South Korea and international treaties.
In the European Union-China context, the “IP Key China” initiative stands outled by the European Commission and implemented by the European Union Intellectual Property Office (EUIPO), where different issues relating to intellectual property in these jurisdictions can be consulted.
 COURT OF JUSTICE OF THE EUROPEAN UNION (Third Chamber), Cofemel – Sociedade de Vestuário, SA/G‑Star Raw CV, case C‑683/17, 12.9.2019, EU:C:2019:721, paragraphs 50 and 54 .
 As an example, mention is made of the decision of the Sichuan Higher People’s Court in its Decision 176 Chuan Zhi Min Zhong (2019) of November 29, 2019 regarding works of applied art, stating that only objects that express a extraordinarily high level the degree of originality should be protected as applied art, while the creators of all other subject matter should seek design protection instead.
 COURT OF JUSTICE OF THE EUROPEAN UNION (fifth chamber), SI and Brompton Bicycle Ltd v Chedech/Get2Getcase C‑833/18, 11.6.2020, EU:C:2020:461.
 COURT OF JUSTICE OF THE EUROPEAN UNION (fifth chamber), SI and Brompton Bicycle Ltd v Chedech/Get2Getcase C‑833/18, 11.6.2020, EU:C:2020:461, paragraph 38.
 COURT OF JUSTICE OF THE EUROPEAN UNION (fifth chamber), SI and Brompton Bicycle Ltd v Chedech/Get2Getcase C‑833/18, 11.6.2020, EU:C:2020:461, paragraph 26.
 In particular with regard to the European Union and copyright, it is recommended to read the study by Peter Ganea, entitled “STUDY ON RESEARCH AND COMPILATION OF LEGISLATION ON COPYRIGHT PROTECTION IN CHINA”. Available at: https://ipkey.eu/sites/default/files/ipkey-docs/2022/IPKEY-CHINA_Research-Compilation-Legislation-Copyrights-Protection-EU-China.pdf
 Available at: https://ipkey.eu/en/china
This article originally appeared in IPR Daily.