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BROMPTON CASE- Intellectual property and technical function: protection after patent expiration?

27 · 02 · 20 - ABGexperts - ABG IP

This post is also available in: Español Català

The Tribunal de l’entreprise de Liège (Belgium) is hearing a dispute between the folding bike company Brompton Bicycle Ltd and one of its competitors, the Korean company Chedech / Get2Get. The latter is placing on the Belgian market a bicycle which is very similar to the well-known Brompton bicycles and the English company considers that it infringes its intellectual property rights.

Nowadays, Brompton is the first bicycle manufacturer in England, with a turnover above 37 million €. Despite the fact that Spain is not at the forefront of bicycle mobility, it is estimated that around 25,000 Brompton bicycles are ridden along the streets of Spanish cities.

Following its invention, Brompton decided to protect its bicycle and, particularly its folding system under the patent system. On 3 October 1979, it applied for a European patent (EP0026800) which was subsequently validated in Germany, France, Italy and the Netherlands.

After 20 years of protection, the patent expired and the folding system entered the public domain, but the popularity of the bicycle continues to grow every day.

Once the patent has expired, is Brompton entitled to prevent the bicycle being copied?

In the first place, Brompton would not be entitled to prevent the exploitation of the invention, i.e. the folding system.

However, if the entire bicycle or part of its configuration is original, it could be protected under the copyright system. Therefore, unauthorized reproduction could be prevented until 70 years after the death of the author. And that’s how Brompton and his creator, Andrew Ritchie (who is 73 years old now) understand it.

Since 1987, Brompton Bicycle Ltd has been marketing the Brompton bicycle with the following external appearance:

Brompton Bicycle Source: Case C‑833/18 Opinion of Advocate Genereal M. Campos Sánchez-Bordona delivered on 6 February 2020

In its more than thirty years of history, the Brompton bicycle and its creator have received several design awards and has been exhibited in various museums such as the Stedelijk Museum Amsterdam.

History repeats itself: the originality of the Brompton bicycle challenged again

The Belgian court is not the first one that is dealing with a similar case. The originality of the Brompton bicycle has been the subject of various court decisions in several countries, including Spain.

In its Decision  41/2010 of 10 February, Madrid Commercial Court no. 5 ruled on the infringement of the Brompton intellectual property rights. It considered that, although the patent EP0026800 had never been validated in Spain, it was necessary to check whether the shape of the Brompton bicycle was imposed by its technical function. That is, whether the folding and compactness functions determined the external shape of the bicycle or if on the contrary, the configuration and dimensions of its curved crossbar, the wheel spacing, its size and the shape of the handlebar were replaceable without losing functionality.

Source: Patent EP0026800

The Spanish court decision ruled that the aesthetic shape of the bicycle was not determined by the technical functions of folding and compactness. It considered that the bicycle was eligible for protection under the copyright system, in accordance with Article 10 of the Spanish Copyright Act. It also decided that Brompton Bicycle’s copyright had been infringed.

With the particularities of the specific case, the Belgian court is in a similar situation to the one faced by the Spanish Commercial Court. It is therefore up to the Belgian court to determine -as a precondition for ruling on the dispute- whether the Brompton bicycle is eligible for protection under the applicable national law, which is based on Directive 2001/29/EC on the harmonisation of certain aspects of copyright.

Chedech / Get2Get bicycle Source: Case C‑833/18 Opinion of Advocate Genereal M. Campos Sánchez-Bordona delivered on 6 February 2020

The significance of preliminary rulings in EU law

If any national court of the Member States of the European Union has doubts about the interpretation of European Union legislation, they may ask for a preliminary ruling to the Court of Justice of the European Union (CJEU). As the CJEU does not have jurisdiction, it will not decide on the merits of the case, but it will provide the interpretative guidelines of the law that the national court must apply.

Accordingly, in June 2018 the Belgian court ask for a preliminary ruling to the CJUE regarding Articles 2 to 5 of Directive 2001/29/EC:

  1. whether the exclusive rights  granted to the copyright holders exclude the protection of those  «works whose shape is necessary to achieve a technical result»? and
  2.  whether in order to assess whether a shape is «necessary to achieve a technical result», account must be taken of the following criteria:

–The existence of other possible shapes which allow the same technical result to be achieved?

–The effectiveness of the shape in achieving that result?

–The intention of the alleged infringer to achieve that result?

– The existence of an earlier, now expired, patent on the process for achieving the technical result sought?’

The opinion of the Advocate General in Case C-833/18

In the course of the proceedings before the CJUE, after the written observations had been submitted and the hearing had taken place, the Advocate General delivered his opinion on 6 February 2020 (Case C-833/18).

Regarding the first question, the Advocate General considers that where technical reasons do not leave space for creativity there is a lack of originality and, subsequently, there is no place for granting copyright protection. In other words, if the technical function prevails and the appearance or form shape is “predetermined”, “imposed”, “dictated exclusively” or “conditioned” by that technical function, copyright protection is excluded.

About the second question, i.e., the criteria for assessing whether the form is ‘necessary to achieve a technical result’ the Advocate General considers the following:

Expired Patent

The (expired) patent may serve to clarify whether the shape of the product was imposed by technical constraints. Although the advocate does not (and should not) assess it, it is important to note that the Brompton patent protected only the bicycle’s folding system (Conclusions – paragraph 80).

Alternative Solutions

Alternative solutions are irrelevant for the purpose of clarifying the exclusive relationship between the characteristics of the product’s technical appearance and function, although the existence of alternative solutions is a factor which may allow scope for intellectual creation leading to the same technical result (paragraph 83 – Conclusions, by reference to the DOCERAM judgment, Case C-395/16). In other words, it may be relevant that the chosen form incorporates important non-functional elements, is due to a free choice of its author.

Achieve the same technical result

For the purposes of assessing the copyright infringements, the willingness of the alleged infringer to achieve the same technical result is not relevant. However, the will to achieve a technical result can be assessed when evaluating the relationship between form and function (Conclusions – paragraphs 89 and 90).

Criteria

The criteria for assessing the relationship of exclusivity between the appearance of the product and its technical performance are not exhausted in those analysed and it is not appropriate to list them (exhaustively or not) since this depends on factual criteria and it is not possible to determine them a priori (Conclusions – paragraph 99).

Creativity and technique: awaiting the decision of the TJUE

In conclusion, although in different contexts, the criteria of the Advocate General coincides in the main with the one used by the Madrid Commercial Court no. 5 ten years ago.  The CJUE is not bound by the Advocate General’s Opinion. Therefore, in a few months we will see whether the CJUE shares the AG’s position or wholly or partly differs.

In this situation, did Brompton Bicycle opt for the best possible way of protection? Would it have been appropriate to consider, for example, protecting the Brompton bicycle as a three-dimensional mark? Would have it been possible at that time? Considering the commercial success of the Brompton bicycle, it seems easy now to think about it. However, we all know how difficult it is to foresee this type of strategy in the long term.

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