A messy affair – IP law meets a cat litter tray in Belgian design court ruling

Introduction 

In recent weeks, the CMS Design team has been delving into pan-EU enforcement of Community design rights, as well as the scope of copyright “originality” under EU law. In a timely development, the Community Design courts of Belgium have been doing the same – resulting in a judgment concerning registered designs for cat litter trays (SAVIC NV v PLANA S Proizvodnja in Prodaja and PETSOLUTIONS NV, Case No. A/22/02872). Our London and Brussels offices have teamed up to review this case, which makes some helpful findings on the EU design courts’ jurisdiction to grant pan-EU relief. It also considers the “technical function” exclusion from design right protection and the different requirements of “novelty”, “individual character” and “originality” under design and copyright law.

The facts 

Savic, a Belgian manufacturer of pet accessories and housing, brought a claim for registered design infringement, copyright infringement and unfair competition against Plana, a Slovenian pet products distributor, and Petsolutions, a Belgian pet products wholesaler. The claim was brought before the Dutch-speaking Enterprise Court of Brussels, a Belgian Community Design Court.

Savic owns two registered Community designs for cat litter trays in class 30.99: the Nestor (002090365-0001) and the Nestor Corner (002472472-0002). Plana manufactures cat litter trays, two of which are marketed as the Ella Comfort and Ella Comfort Corner, which Savic alleged infringed its Community design rights in the Nestor and Nestor Corner (respectively) and constituted unfair competition.

Savic sought a pan-European injunction against Plana and Petsolutions to stop them from distributing the Ella cat litter boxes across the European Union. Plana filed a counterclaim seeking a declaration that Savic’s registered designs were invalid, on the basis that they were dictated solely by their technical function, were not new, and did not have individual character.

In a judgment of 19 October 2023, the court dismissed Savic’s claim for infringement in relation to its designs and copyright, as well as the unfair competition claim. However, the court did confirm that it would have had jurisdiction to grant injunctive relief against both defendants on a pan-European basis, had the registered design infringement claims been successful. Plana’s counterclaim was successful, and the court held that both of Savic’s Community Desings were invalid as they lacked “novelty” and/or “individual character”.

Design infringement: Pan-EU relief

Community design law states the following regarding the jurisdiction of Community design courts:

• Under Article 82(1) of the Community Designs Regulation (“CDR”), proceedings for Community design infringement should be brought before the court of the Member State where the defendant is domiciled or, where they are not domiciled in any Member State, in the Member State where they have an “establishment”.
• Pursuant to Article 83(1) of the CDR, a Community design court whose jurisdiction is based on the defendant’s domicile or establishment under Article 82(1) has jurisdiction to rule on infringement across all Member States and to grant pan-EU relief against such defendant.

Whilst it was not in dispute that the Belgian court had jurisdiction to grant pan-EU injunctive relief against Petsolutions (a company with a registered office in Belgium), it was contested whether it could do so against Plana. Plana argued that, as they were a Slovenian business with no establishment in Belgium, the Belgian court had no pan-EU jurisdiction against it and its jurisdiction should be limited to the territory of Belgium.

However, the Court pointed to Article 8 of Regulation 1215/2012 (“the Recast Brussels Regulation”), which states that if a defendant is one of a number of defendants to an action and is domiciled in a Member State, an action can be brought in the courts where any one of those defendants is domiciled. In such cases, the Community Design Court hearing the case will have jurisdiction to grant pan-EU relief against each of those defendants. This principle only applies where the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.  

In Nintendo v Big Ben Interactive GmbH and Big Ben Interactive S.A (Cases C-24/16 and C25/16), a similar principle was applied and the Court of Justice of the European Union (“CJEU”) confirmed that a single Community Design Court could grant the rights holder a pan-EU injunction on the basis of infringing acts carried out by two connected defendants based in different Member States.

Therefore, in this case, the Belgian court held that it did have jurisdiction to grant pan-EU relief over both Plana and Petsolutions, because the claims satisfied the requirement under the Recast Brussels Regulation of being so “closely connected” that the usual territorial restrictions under the CDR did not apply.  In particular, the court found that Savic’s claim was very closely related to infringements by both businesses within the EU, as the Court inferred from the facts (although this was not admitted) that Petsolutions had purchased the Ella cat litter boxes from Plana. Therefore, the jurisdiction of the Belgian court with respect to both Plana and Petsolutions extended to the entire European Union.

It is worth nothing that, as copyright is not protected by a pan-EU unitary right in the same way as Community designs, the same jurisdictional principle does not apply to copyright claims. Accordingly, the claimant was not able to apply for relief outside of the Belgian territory for the copyright infringement element of its claim.

Technical exclusions from design right

Article 8.1 of the CDR provides that Community design rights do not subsist in features of appearance of a product which are “solely dictated by its technical function”. In practice, this refers to design features which have been chosen solely to fulfil certain functionality, and where other considerations – notably visual and aesthetic ones – played no part in the design of that feature.

In their counterclaim, the defendants argued that Savic’s Community registered designs for the Nestor and Nestor Corner were invalid under Article 8.1 as all of their features were dictated by the product’s technical function of being a cat litter box. However, the Court held that whilst technical and functional considerations might have played an important role in the development of the claimant’s designs, those were not the only factors at play. The specific appearance of those designs reflected deliberate design choices, where there had been design freedom. Accordingly, the designs were largely but not solely dictated by technical function, and therefore fell outside of the Article 8.1 CDR exclusion.

The Brussels court’s application of the technical function exclusion in its judgment of 19 October 2023, with extensive reference to case law of the CJEU and General Court case law, aligns with the typical application by the Belgian courts of the principles set forth by the CJEU, and in the case of the CJEU Doceram judgment of 8 March 2018 (C-396/16) in particular.

Prior to the Doceram judgment, there were two differing approaches in the case-law and in legal literature on the application of Article 8.1. The first theory, dubbed the “multiplicity of forms” theory, was that the existence of alternative designs that fulfil the same technical function demonstrated that the design was not dictated exclusively by its technical function. The opposing “causative” or “device oriented” theory, was that Article 8.1 was applicable whenever the appearance features of the product were dictated solely by the need to achieve a technical solution and the aesthetic considerations were entirely irrelevant, in which case there was no creative effort worthy of protection as a design.

In its Doceram judgment, the CJEU favoured the “causative or “device-oriented” theory and held that “in order to determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard”. In line with this, in the Savic case, the “technical function” exclusion of Article 8.1 did not apply, as the Brussels court found that the technical function was not the only factor that determined the appearance features of the designs.

The “technical function” exclusion (implemented in the UK under Section 1C(1) of the Registered Designs Act 1949) was also considered recently by the UK High Court in the case of Chiaro Technology v Mayborn [2023] EWHC 2417 (Pat) (reported by CMS Law-Now here) concerning registered designs for a wearable breast pump and its components.

Whilst that case did not involve a counterclaim for invalidity,  the court held that several key aspects of the shape of the claimant’s registered designs had been chosen solely for functional reasons and were therefore excluded from design protection, narrowing the scope of the registered design. Again, it did not matter that other shapes could have been chosen to achieve largely the same function – so the UK court firmly rejected  the “multiplicity of forms” theory in line with Doceram. The only relevant question was whether the chosen shape was “required for functionality”.

On the facts of that case, the s.1C(1) exclusion meant that several key aspects of shape were to be disregarded in the overall comparison against the defendant’s design, and the overall impression created by the remaining features was different. Notably, the Judge held that even if the key features had not been excluded by s. 1C(1) as being purely technical, he still would have found the defendant’s product to create a different overall impression to each of the registered designs.

“Novelty”, Individual character” and “originality”

The Belgian court’s judgment of 19 October 2023 furthermore effectively illustrates the interplay between design rights and copyright. In Belgium, it is common for creators to simultaneously invoke both design rights and copyrights in infringement proceedings. Nevertheless, although a design may meet the criteria for copyright protection, and vice versa, it is essential to note that each protection mechanism is subject to distinct conditions.

A design is eligible for protection under EU design law when it meets the criteria of “novelty” and “individual character”. In accordance with Article 5 CDR, a design is considered new if no identical or immaterially different design has been made available to the public before the date of filing of the design application or its priority date. The individual character of a design, as per Article 6 CDR, is determined by the overall impression it produces on an informed user, which must differ from the overall impression produced on such a user by any design made available to the public before the date of filing of the design application or its priority date.

A work will be protected by copyright when it is expressed in a concrete form and is original, in the sense that it is "an author’s own intellectual creation", as established in the landmark CJEU ruling in the Cofemel case (Case C-683/17). A work qualifies as the author's own intellectual creation if it reflects the author's personality, as an expression of his free and creative choices.

The Brussels court's approach

In evaluating the defendants' invalidity counterclaim, the Brussels court examined the novelty and individual character of Savic's Community Designs by comparing them with prior cat litter box designs as submitted by Plana.

While acknowledging the novelty of the Nestor design, as none of the prior designs exhibited the same combination of features, the Court found that the Nestor design created an overall impression not significantly different from that of a prior design. The fact that certain characteristics of the prior design were not entirely identical to those of the Nestor design did not lead to sufficiently clear differences for an informed user. Consequently, the Court concluded that the Nestor design lacked individual character. This comparison clearly illustrates that a design differing significantly in numerous details from a prior design, may still be denied protection due to a similar overall impression.

Concerning the evaluation of the Nestor Corner design, the Court determined that it lacked novelty, given that it was clearly identical to the prior designs submitted by Plana, with differences only in insignificant details. As a result, both Community designs of Savic were declared invalid and Savic’s design infringement claim was deemed unfounded.

The judge subsequently examined Savic’s copyright infringement claim, basing its assessment primarily on its evaluation of the design infringement claim. The Court determined that since the Nestor design was to a large extent functionally determined and lacked individual character, and the Nestor Corner design lacked novelty, those designs did not sufficiently embody the designer’s free and creative choices and hence were not eligible for copyright protection. The Court thus also dismissed Savic’s copyright infringement claim as unfounded.

Even prior to this case, there had been suggestions in Belgian legal literature that the theoretical distinction between "originality" and "individual character" is elusive or negligible in practice. If Belgian courts find that a design has individual character, they tend to judge such a design to be “original” as well, and vice versa. This is illustrated in this judgment, where the Court found that as the Nestor design did not have individual character, it was also not original. As a matter of law, these requirements are rooted in different legislation and are subject to separate case law – but it may be that there is very little practical difference between them.

The UK courts’ approach

Whilst the concepts of design “novelty” and “individual character” apply equally to UK registered designs, the UK courts have traditionally taken a different approach to copyright “originality” compared with their EU counterparts. Under the UK Copyright, Designs and Patents Act 1988 (CDPA), a 3-dimensional work will only be protected if it is a work of architecture, a sculpture, or a “work of artistic craftsmanship” which requires it to possess an element of artistic or aesthetic character. Accordingly, the CDPA does not confer copyright protection for 3-dimensional products which are solely functional – even if they are “original” in the Cofemel sense dictated by the CJEU. As noted in our Law Now summary of the WaterRower case here, the UK courts have acknowledged that the CDPA is not in conformity with EU law. However, the requirement of ‘artistic’ craftsmanship remains in force in the UK and has not yet been disapplied by the courts.

Accordingly, it is less likely that the UK courts will treat the requirement of “originality” as being equivalent to “individual character”, as it requires more than the ‘author’s own intellectual creation’ and depends in addition on the nature of the work. Had the Savic case been heard in the UK, it is possible that the claimant’s Nestor designs would had been denied UK copyright protection, not because they lacked “originality” but because they were arguably not ‘artistic’ works under the CDPA. Such a finding has yet to be made by the UK courts in post-Brexit copyright litigation, so it remains to be seen whether the UK courts will continue to follow the strict wording of the CDPA contrary to established EU law, if presented with a product which is not even arguably “artistic”.

Unfair competition

In addition to a design and copyright infringement, Savic further claimed that the defendants’ conduct constituted unfair competition, contrary to Article VI.104 of the Belgian Code of Economic Law (“CEL”), which prohibits acts contrary to fair commercial practices that (may) harm the professional interests of one or more other businesses. Specifically, Savic accused Plana and Petsolutions of offering products that infringe its intellectual property rights or, at least, attempt to unlawfully imitate the ‘look and feel’ of Savic’s products and to exploit its reputation in the Ella products.

The Belgian Courts’ approach

In Belgium, it is common practice to also invoke unfair competition claims in IP infringement cases. In practice, the success of these unfair competition claims is often closely interlinked with the success of the IP infringement claims. 

In a landmark judgment of 29 May 2009, the Belgian Court of Cassation held that an act where a seller imitates another market participant's offer is generally allowed, unless the seller either infringes upon intellectual property rights, or makes this offer under accompanying circumstances that conflict with the requirements of fair trade practices. Experience shows that Belgian courts rarely accept that such circumstances have occurred when they have dismissed the corresponding intellectual property infringement claims. In this case, too, the Court ruled that there was insufficient evidence of such circumstances and dismissed Savic's unfair competition claim.

The UK Courts’ approach

The UK is notably different from many of its continental European neighbours in that it does not have a separate tort of ‘unfair competition’. Instead, parasitic or lookalike products are governed by the law of “passing off”, which requires that the similarity of the defendant’s product would cause a misrepresentation leading to deception among the public. The requirement for ‘misrepresentation’ means that passing off can be very difficult to prove, as it is not enough to show that the defendant’s conduct was ‘unfair’ in some way. However, it is possible for a claim of “passing off” to succeed even if there is no infringement of any other IP right (or no other rights exist), which makes it a potentially powerful enforcement tool in many cases.

Comment

This judgment serves as a valuable reminder of the significant interplay within the Belgian legal framework between intellectual property rights and the rules on unfair competition. Creations have the potential for cumulative protection encompassing copyright, design rights, and fair market practices, depending on the fulfilment of the respective conditions. It also casts an interesting light on the extent to which some of these rights (notably copyright and design rights) overlap, despite being separate rights aimed at protecting different types of works.

This case also illustrates the powerful nature of EU design rights which, given the right circumstances, entitle the rights holder to injunctive relief across 27 Member States through a single action. This is in contrast to other IP rights – notably copyright – which can only be enforced on a territory-by-territory basis.

Whilst not deployed in this case, EU rights holders should also be aware of a further route for obtaining pan-EU relief, namely the procedure under Article 82.3 of the CDR. This provides that, for claims where neither party is domiciled or has an establishment in the EU, a non-EU claimant may bring proceedings for Community design infringement in the courts of the Member State where the EU Intellectual Property Office has its seat – which is currently Alicante, Spain. In such cases, the courts of Alicante have the power to grant pan-EU injunctive relief even where the defendant is a non-EU entity. This route will be highly valuable for non-EU holders of Community registered designs who are seeking to enforce their rights against defendants outside of the EU, who might otherwise seek to evade pan-EU relief.

Article co-authored by Charlotte Sanderson, Trainee Solicitor