The second day of the MARQUES Design Symposium in Frankfurt included sessions on the value of design registrations, unfair competition and using trade marks to protect product design.

Value of designs

Mikas Miniotas, AAA Legal Services in Estonia and Co-Chair of the MARQUES Designs Team, introduced and moderated Session 3: The added value of design registrations.

Lynn Schreier, On Holding AG, Switzerland, speaking in a personal capacity, said the key question to ask is: what is the purpose behind a design registration? The reasons may include to protect innovation, deter competitors, enforce against copies or imitations, gain leverage in commercial negotiations or as a marketing tool.

In the fashion industry, a major trend is that time to market has got shorter. This means that, in many cases, the IP counsel may not see the final design before they have filed applications. The different requirements in each country also have to be taken into account.

In addition, said Lynn: “Product designs are hard to protect. Often the most commercial products are the most simple from a design perspective.” That means that protection can be relatively narrow. She added that design registrations are useful for online enforcement, and can be uploaded to online portals, while copyright can be harder to prove. When it comes to counterfeits, she said: “I’m usually looking for a fast solution.”

Kal Rosenstein, Chief Experience Officer of WDC26 gave a talk during Thursday evening’s dinner, focusing on “Design and Democracy”

Delivering a presentation on behalf of Eva Maierski, Lubberger Lehment, Germany, who was unable to attend, Mikas talked about the boundaries between copyright and design law. He focused on Deity v Mundorama and Stay Design, a design infringement action concerning shoes. The CJEU said that an EU design does not require genuine design activity; modifications to visual characteristics made ad hoc do not preclude individual character; and fashion trends are not likely to limit the degree of freedom of the designer.

The Court stressed that the law protects the appearance of a product. “The Court said: We are not concerned with how it was created. That is not important for the validity of the design – unless there is bad faith,” said Mikas. A design “does not require a minimum degree of creation,” according to the Court.

Mikas raised the question whether AI-created designs could be protected, and also how can you know if something is created by AI?

In the final presentation in this session, John Coldham, Gowling WLG (UK) LLP provided a UK perspective asking: “What works in real life against real-life problems?” He discussed a case brought by Marks & Spencer against Aldi over gin bottles. “The principal point of this case is that M&S succeeded, so please do consider registering products or parts of products as designs,” said John.

John also talked about UK unregistered designs, which cover shape only and last 10-15 years. He said the 2015 G-Star case concerning jeans was a good illustration of how powerful UK unregistered designs can be. As surface decoration is excluded, UK unregistered designs may even be more useful than registered designs in some cases. The important takeaway for businesses is to keep records, he concluded.

Harmonising unfair competition in Europe

In Session 4, Jorn Torenbosch of Utrecht University summarised his research on the harmonisation of unfair competition. He argued that: “Through the backdoor of international law, the entire area of unfair competition law has been harmonised to some degree in the EU.” This conclusion was based on the application of the TRIPs Agreement and the Paris Convention. While in principle the EU is not bound by the Paris Convention, the EU can succeed member states in international commitments when competence has been transferred to it in full.

In practice this means, said Jorn, that the CJEU has the final say on what is effective protection against unfair competition, when an act of competition is contrary to honest practices and what is the meaning of the prohibition of all acts of such a nature as to create confusion. “You can make it a European question instead of a national one,” he said.

Trade marks for product designs

Session 5: Trade mark protection of product designs was moderated by Jesse Hofhuis, Hofhuis, The Netherlands and featured Catherine Shapiro, Airwair International Limited – Dr. Martens, UK; Michael Goldmann, Harte-Bavendamm, Germany; and Xavier Ragot, Christian Louboutin SAS, France. Jesse began the discussion by showing an image of the Birkenstock sandal and asking: is this an indication of origin in a trade mark sense?

Catherine set out how she explains trade mark law to people in the business. “Over the years Dr. Martens has distilled our design language into a set of protectable trade dress features,” she said. These include a distinctive yellow-on-black heel loop, the yellow welt stitch and the two-tone grooved sole edge. Every one of its products, including boots, sandals and bags, is inspired by the original 1460 boot.

She stressed that many products have design features that are protectable as trade marks, and it is important to use them consistently over time to drive equity in that design. Dr. Martens has a variety of trade mark rights in different countries, said Catherine, adding: “It’s very hard to design around our trade mark portfolio if you have a business that’s global or pan-European.”

“By enforcing, our trade dress becomes even more recognisable. We enhance the distinctiveness, making it easier to deal with lookalikes,” she said, adding that the company is “very proactive” in finding lookalikes and monitoring agreements. It has dealt with thousands of infringements over the years.

Michael shared some examples of trade marks of product designs in the EU, including trade marks for the shape of goods, pattern marks and position marks. He noted that trade mark law is sceptical about product designs, based on concerns about whether consumers use them to identify origin and about perpetual protection. “The CJEU interprets all the exclusions in Article 7(1)(e) quite broadly,” he said.

MIchael pointed out that  the Catch 22 of protecting product designs is: “If a product design is ordinary or common, then it is not distinctive. But if it’s very attractive it comes under the substantial value exclusion.” Imaginative add-ons can help work around the exclusions, he said. He concluded that there is uncertainty and in fact the functional exclusions are rarely raised by examiners, giving examples of product design marks that have been registered by EUIPO.  

Answering questions from Jesse, Xavier discussed challenges in protecting Louboutin’s trade marks for its red sole in jurisdictions including Japan and China. He said obtaining an EUTM was a game-changer for Louboutin. He also touched on its success in bringing enforcement actions under both trade mark and unfair competition laws.

MARQUES Chair Claudia Pappas concluded the Symposium, describing it as “inspiring”. “We have many more aspects to cover, maybe in two years’ time,” she said.