Designs 2015
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Designs 2015 France Karine Disdier-Mikus DLA Piper A Global Guide DLA Piper and Trademarks The team at DLA Piper is one of the best in the world DLA Piper has a unique market offering for trademark matters, with a global trademark practice managed by the Paris trademark team. We have a team of highly-skilled lawyers, formerly European intellectual property lawyers, specialized in intellectual property law, trademark management and prosecution, including filing and renewing trademarks worldwide, developing branding strategies and managing related disputes, as well as any related matters concerning designs and domain names. The team is supported by highly advanced, state of the art technological tools enabling “best in class” effective and transparent trademark management. www.dlapiper.com DLA Piper is a global law firm operating through various separate and distinct legal entities. Further details of these entities can be found at www.dlapiper.com France DLA Piper Author Karine Disdier-Mikus Legal framework 2011, SAS Interiors v Vincent C Holding). French design 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 copyright 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 www.worldtrademarkreview.com Designs: A Global Guide 2015 | 39 FRANCE DLA PIPER DLA PIPER FRANCE 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 designer 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 patent, 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 40 | Designs: A Global Guide 2015 www.worldtrademarkreview.com FRANCE DLA PIPER DLA PIPER FRANCE 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.