Designs 2015

France Karine Disdier-Mikus DLA Piper

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Author Karine Disdier-Mikus

Legal framework 2011, SAS Interiors v Vincent C Holding). French law was modified by a decree A more recent trend of case law considers of July 25 2001, which implemented the that the conditions for and design EU Designs Directive (98/71/EC). Under protection must be assessed independently. the doctrine of l’unité de l’art, designs are Therefore, the courts have refused copyright cumulatively protected in France under both protection to registered designs for lack of copyright (Articles L111-3 and following of the originality, whereas they admitted protection IP Code) and design law (Articles L511.1 and under design law (TGI Paris, March 29 following of the code). 2011, Startoy SARL v Papo La Maison des According to this doctrine, and although Figurines; TGI Paris, June 10 2011, Christian the conditions for protection under the two Dior Couture v Versace France and Gianni regimes are different (‘originality’ for copyright Versace SpA, reversed on appeal; Paris and ‘novelty and individual character’ for Court of Appeal, Pole 5, Ch 1, June 8 2011, design law), the French courts usually held Crystal Denim v BA&SH SAS and Spot SARL; that a registered design was eligible for Paris Court of Appeal, Pole 5, Ch 2, June 24 protection under both copyright and design 2011, Cyrillus SA v TOD’S SpA; C Cass, crim, law when it was demonstrated that the design December 13 2011; C Cass, 1st civil, April 5 was new and benefited from an individual 2012; TGI Paris, June 5 2014, Sandro Andy character, thus characterising the author’s v Zenith; TGI Paris, May 22 2014, IHT v personality (‘originality’) and enabling EICHHOLTZ BV). copyright protection (Paris Court of Appeal, Any appearance or packaging of the Pole 5, Ch 1, November 28 2012, SAS The whole or part of a product, including any two Kooples Diffusion v Société Gysele; Paris Court or three-shaped figures, which differs from of Appeal, Pole 5, Ch 2, December 9 2011, Ana other existing products by “one or several Maria Blome GmbH v SARL Stephane Corler; exterior aspects giving it its own and new Paris Court of Appeal, Pole 5, Ch 2, January 14 physiognomy” (Article L511-3 of the code) is

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eligible for protection as a design. Designs can This rule also applies to registered and be nearly anything – for example, lines, shapes, unregistered designs which are protected by colours, textures, materials, industrial or natural copyright. products, packaging, presentations, graphic symbols and fonts. The only elements which Registered designs cannot be assimilated to a design or a model are: According to Articles L511-3, L511-4 and L511-8 • abstract concepts or genres; of the IP Code, a registered design is valid if • any shape that is hidden from view in the the following conditions are met: course of its normal use; and • The design is new; • software (specifically excluded from • The design benefits from individual design protection). character; and • The design does not consist of features Unregistered designs solely dictated by the product’s technical Under French law, an unregistered design is function, or the exact form and dimension eligible for copyright legal protection if the of the design need not be reproduced in owner can demonstrate that the design is order to allow it to be associated to another ‘original’, meaning that the design shows the product mechanically by being placed author’s personality in its creation. against it, connected to it or placed inside A design can also be protected as an or outside it in a manner that allows both unregistered Community design by virtue products to perform its function. of Article 11 of the EU Community Designs Regulation (6/2002), provided that it complies Novelty with the condition of novelty, has individual A registered design is new when no identical character and has been disclosed to the design has been disclosed before the filing public within the European Union (ie, has date of the application for registration or been published, exhibited, used in trade or before the date of the priority claim. Two otherwise disclosed in such a way that, in the designs are deemed to be identical if they normal course of business, these events could differ in only insignificant details. reasonably have become known in the sector Any publication or disclosure of an concerned operating within the European identical design, including by the Union). For example, the French courts have or another party, anywhere in the world by protected as an unregistered Community any means (including use or filing of a , design a design disclosed in the European trademark or prior registered design), may Union through the diffusion of a catalogue result in a determination that a subsequent and the realisation of a press campaign design is not new. (Paris Court of Appeal, February 8 2013, Ash If the publication or disclosure is made by Distribution v Christian Dior Couture). the designer or its successor in title, a grace An unregistered Community design is period of 12 months is provided during which protected for a period of three years from any disclosure made by the designer or its the date on which the design was first made successor in title does not destroy the design’s available to the public within the European novelty. This 12-month period is calculated as Union (Paris Court of Appeal, July 6 2012, SA of the date of filing of the application or the Christian Dior Couture v Versace France). priority date. The same applies if the design was Under French law, the rights in a design are made available to the public as a consequence granted to the creator or its successor in title of an abuse or unfair behaviour against the (Article L511-9 of the code). In accordance with designer or its successor in title. Therefore, the case law, in principle, if the author of the design signature of a non-disclosure agreement with does not claim ownership of it, a corporate entity any person involved in the creation of a design which markets a product bearing or embodying is vital in order to safeguard the owner’s ability the design under its own name is presumed to be to file a registered design. the owner of the unregistered Community design However, the absolute nature of the (Ash Distribution v Christian Dior Couture). novelty requirement is slightly mitigated, as

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A registered design is new when no identical design has been disclosed before the filing date of the application for registration or before the date of the priority claim

a design will not be considered to have been 20 2011, Case C-281/10 P PepsiCo Inc v Grupo made available to the public if the disclosure Promer Mon Graphic; ECJ, October 22 2011, of the design “could not reasonably have Cases C-101/11P and C-102/11P, Neuman v José become known, according to the normal Manuel Baena Grupo). course of business in the sector concerned, by professionals operating in the European Technical function Community, before the date of filing of an The design must not be dictated solely by its application for registration or before the date of technical function. Design protection is not priority claimed” (Article L511-6 of the code). granted to features of appearance of a product Although this 12-month grace period allows which must be reproduced in the exact form enough time to consider design registration, and dimensions in order to permit the product note should also be taken of the six-month in which the design is incorporated or to which priority deadline set by Article 4 of the Paris it is applied to be assembled with another Convention for the Protection of Industrial product, such that each may perform its Property in order to benefit from the first function. However, a design allowing multiple registration date when extending protection of assembly or connection of interchangeable the design registration internationally. products within a modular system is eligible for French design protection. Individual character Thus, if the technical function is linked A design has individual character when it directly to the product’s appearance, it may produces on an ‘informed observer’ an overall not be protected by the design. In such case, visual impression which differs from any the only means of protection may be a patent, design disclosed before the date of filing of the if the conditions for patent protection are registration application or before the priority fulfilled. This may be the case when a specific date (the definition of ‘informed user’ provided shape leads to a technical effect, which is in the Community Designs Regulation has been inseparable from the shape of the product. replaced by the notion of ‘informed observer’ in French law). To assess individual character, Spare parts the French court must consider the designer’s Designs which are part of a complex product, degree of freedom in developing the design. such as spare parts, are eligible for design The Supreme Court recently held (C Cass, protection only to the extent that: com, April 3 2013) that the informed observer • the design, once it has been incorporated is not the customer for whom the product in the complex product, remains visible is intended, but rather an observer with during normal use of the product by particular vigilance by virtue of his or her the end user, excluding maintenance, personal experience or extensive knowledge servicing or repair work; of the sector. This definition is similar to • the visible features of the component that given by the European Court of Justice part fulfil in themselves the novelty and (ECJ) for Community designs (ECJ, October individual character requirements; and

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The French Design Office is strict in its assessment of the sample provided: every sample must include only the design to be registered and no other elements (eg, word elements, accessories)

• the design is not dictated solely by its The French Design Office proceeds with technical function. only a formal verification of the application; it does not check whether the design fulfils the Therefore, the French courts have conditions for design protection (novelty and allowed design protection for various vehicle individual character) and does not check prior parts (eg, lights, rearview mirrors, body, rights. If irregularities are found, the French optics, bumpers, seat covers and bonnets). Design Office gives the applicant a deadline by which to amend or divide the application Procedures according to the Locarno Classification. To register a design in France, the applicant The registration is published in the Official must file a design application with the IP Bulletin. With the exception of simplified French Design Office. proceedings, where deferment is a right, the The application form must contain: applicant can ask that publication of the • a request for registration; registered design be postponed, but such • the name of the applicant; postponement can be granted for only up to • the representation of the design; three years. The applicant can still disclose • an indication of the product in which the the design at its own initiative. design is to be incorporated or used; A registered design is protected for • the classification of the product; five years, renewable up to a maximum of • the convention priority details, if any, 25 years. and an official copy of the priority rights and/or the deed authorising the Enforcement applicant to claim priority; and Invalidity • payment of the application fees. According to Article L512-4 of the IP Code, a registered design can be declared invalid by An application can cover several designs, the court if the design: provided that they belong to the same • does not comply with the conditions for category in the Locarno Classification protection as a design (Articles L511-1 to (Locarno Arrangement, October 8 1968). L511-8 of the code ); There are no prerequisites for the samples • infringes the rights attached to an earlier of the design (drawing or picture), but they design which was disclosed to the public must allow hard-copy reproduction. after the date of the registration application As described in Article R512-3 of the IP or, if priority is claimed, after the date of Code, the French Design Office is strict in priority, and which has been protected its assessment of the sample provided: every since an earlier date by the registration of sample must include only the design to be a Community design, a French design, an registered and no other elements (eg, word international design designating France or elements, accessories). an application to register such designs;

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A design infringement lawsuit can be brought by the recorded owner of the registered design whose rights have been infringed, or by the exclusive licensee duly recorded with the French Design Office (unless there are contractual dispositions to the contrary, and provided that the design owner has not brought a lawsuit despite a formal notice), before either the criminal or civil jurisdiction. Before the criminal courts, an infringer faces a fine of up to €300,000 (or €500,000 in certain circumstances) and imprisonment for up to Karine Disdier-Mikus three years. The criminal courts can also order Counsel the total or partial closure of the infringer’s [email protected] company. Before the civil courts, infringements Karine Disdier-Mikus is a counsel in DLA are mainly punished by the award of damages, Piper’s IP and technology department which in principle must compensate the loss in Paris. She graduated with a master’s exactly. Punitive damages are not available from a French university and an LLM under French law. from McGill University, Canada. She is a The French courts are usually quite former European trademark and design protective of design rights and copyright holders. attorney and has more than 15 years’ experience in the management of IP portfolios worldwide. She specialises in all Ownership changes and rights transfers aspects of IP law, including trademarks, As with any other IP rights (eg, or protection, anti-counterfeiting and trademarks), any change of ownership must trademark enforcement, as well as design, be recorded with the French Design Office domains, copyright and unfair competition in order to enable the assignee to enforce its law. She is an active member of the design rights against third parties. International Trademark Association and APRAM, an international French-speaking association for trademark practitioners. Apart from the double protection offered by copyright and design law as applied by French law, there is clear overlap between designs • infringes the copyright of a third party; or and trademarks, even if their respective • uses an earlier protected distinctive sign conditions of protection and granted rights are (eg, a trademark) without the authorisation different by nature. Therefore, the decision of its holder. to register a trademark or a design must be considered seriously, taking into account the The invalidity ruling has an erga omnes advantages and inconveniences of each type effect, which means that the invalidated of protection. design will be treated as if it had never existed. The ruling will be published in the National Designs Register.

Infringement The unauthorised use of a registered or unregistered design constitutes infringement. In assessing infringement, the DLA Piper French courts take into account the overall 15-17 rue Scribe, 75009 Paris, France visual impression that the design creates Tel +33 1 40 15 24 00 on the informed observer, setting aside Fax +33 1 40 15 24 01 insignificant differences. Web www.dlapiper.com

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