Advocate General Nicholas Emiliou has delivered his opinion in the case Deity Shoes, S.L. v Mundorama Confort, S.L. and another (Case C 323/24). The case considers whether a footwear design made by Deity Shoes, S.L. (Deity Shoes) qualified for protection as a design in the European Union and raised important questions about the relevance of the status of the designer’s effort and skill and surrounding factors in the assessment of design.

The Advocate General’s opinion states that intellectual effort or genuine design activity are not requirements for EU design protection, and if followed by the European Court of Justice (ECJ), the opinion will further support the mix of different and sometimes overlapping intellectual property rights which designers in the European Union can rely upon.

Background

In 2021, Deity Shoes started an infringement action against Mundorama Confort, S.L. (Mundorama Confort) and Stay Design, S.L. (Stay Design) based on registered and unregistered EU designs for several of their footwear models. In return, Mundorama Confort and Stay Design filed an invalidation action against Deity Shoes’ EU designs, arguing lack of novelty and individual character.

Mundorama Confort and Stay Design claimed that the design and production process of Deity Shoes’ footwear does not involve any innovation and does not have any fashion components, as their designs are based on product catalogues which are then modified by Deity Shoes to become the final product. The modifications include choices in colour, materials and decorative elements only.

The Spanish court referred the case to the ECJ to consider the following questions:

1. Are “intellectual effort” or “genuine design activity” requirements for an EU design to be registered?
2. Can fashion trends restrict a designer’s freedom for the purposes of Article 6 of the EU Design Regulation?

Opinion of the Advocate General

In response, the Advocate General advised the ECJ as follows:

• “Novelty” and “individual character” of the design are the only requirements under the EU Design Regulation, which does not contain any additional conditions, and such requirements cannot be interpreted as including some sort of originality threshold.
• “Intellectual effort” or “genuine design activity” cannot be considered as protection as part of the “freedom of the designer” assessment, as an EU design cannot be denied protection as some features of the design are dictated by constraints linked to the technical function of the product.
• The link between “design” and “designer” differs from the link between “work” and “author” under copyright regulation. In fact, EU designs are protected without it being necessary to consider any attributes of their designers.
• Design trends are intrinsically linked to market expectations, which are, by nature, fluctuating. Therefore, such expectations should not constrain the freedom of a designer, as already pointed out by the General Court in Porsche v EUIPO (T 209/18).
• Customisation of prior designs alone should not prevent a design from being registered or lead to invalidity.

Takeaways

The Advocate General’s opinion that intellectual effort or a genuine design activity are no requirements for EU design protections further confirms the distinction between design and copyright regimes in the European Union. Even small differences in a product may be considered a new design with individual character, as long as these small differences result in a different overall impression to the informed user.

The ECJ will now issue a decision in this case considering the Advocate General’s opinion, and we will report on this decision separately in due course.

This article was co-authored by Sophie Verstraeten