Quoting Diana Santos, “Creativity is nothing but the way to solve new problems“. Designs are a way of creating, expressing one’s thinking and solve problems. The protection of functional forms is not just a matter of patent law. Suppose a design dictated solely by a technical function has been excluded from the scope of protection under design patent law and accidentally protected by patent. Copyright, then this would lead to a monopoly on technical solutions and hinder technological innovation.

CJEU (The Court of Justice of the European Union) in SI and Brompton Bicycle Ltd case, the functionality of a bicycle can enjoy copyright protection, provided that it is an original work that is the result of the intellectual creation of the author/creator.

Highlights of the dispute between Brompton and Get2Get


UK based company founded by Mr SI. in 1987 (Brompton Bicycle Ltd.). The company has been selling and marketing the famous compact Brompton bicycle. Its popularity is due to its unique design and structure. The bicycle has three different positions: folded, unfolded and a standby position that allows you to keep your balance on the floor. An expired patent-protected this feature of the Brompton bicycle.

Get2Get is a Korean company that makes and sells a bike called ‘Chedech‘ that appears to be similar to the Brompton cycle, has the same folding characteristics and the same three positions that a foldable feature. In November 2017, Brompton Bicycle Ltd., before the company court in Liège, Belgium, was against Get2Get for alleged copyright infringement. The Belgian Court suspended the proceedings and referred to the CJEU to determine whether the copyright protection under EU law (Directive 2001/29) under Articles 2 to 5 is extended to products whose shape is partly required by a technical result. The CJEU had to clarify the following questions put by the Belgian Court:

Should EU law be interpreted to exclude the form necessary to achieve a technical result from copyright protection works? 

“In assessing whether a shape is required to achieve a technical result, the following factors should be taken into account:”

(i) the existence of other possible shapes that could produce the same technical result;

(ii) effectiveness of the form to achieve this technical result;

(iii) the alleged infringer intention to achieve that outcome; and

(iv) the existence of an earlier, now expired patent for the process to achieve the desired technical result.”

Court’s Judgement: The Court concluded that “a subject that meets the condition of originality can be protected by copyright, even if technical considerations dictated its behaviour“. However, it must “be assumed that his dictation has not prevented the creator from reflecting on his personality on the subject as an expression of free and creative choices“. Furthermore, suppose the product’s shape is determined solely by its technical function, and in the present case, this product cannot be protected by copyright.

In order to determine whether the product in question falls under the scope of copyright protection, it must therefore be ascertained whether, by choosing the product shape, its creator has initially expressed his creative abilities and designed or created the product in such a manner that it reflects his personality in work.

Directive 2001/29 (Articles 2 to 5) protect authors/creator against unauthorized copying, public communication and distribution of their works. First, the Court cited Case Cofemel C – 683/17 to determine whether the bicycle is a piece of ‘work‘. To know if the subject falls under the term’ work‘, it is important that it is an original work, created by the creator’s intellectual creation and reflecting the expression of that creation. Both conditions are necessary to meet the requirement of the term’ work’. The CJEU further stated that a product should not be regarded as a work in which the implementation of the matter in question is necessarily dictated by technical considerations and leaves no room for creative freedom. Hence, it has been argued that the product does not enjoy copyright protection. The Court also found that the question must be identifiable with sufficient objectivity and accuracy.

The WIPO Copyright Treaty (Article 2) found that copyright protection does not extend to ideas. The Court cited its judgment in the SAS Institute and BSA cases to find that when its technical function dictates the expression of the constituent parts of a subject, the implementation of various ideas is limited. Hence the thought and the expression are inseparable. The CJEU found that although the shape/design of the bicycle appears to be determined by its technical function, the originality has yet to be determined by the national judicature.

link between form and technical function: The essence of the discussion, in this case, revolved around the assessment of the necessity of a form in order to obtain a technical result. The CJEU had to take into consideration four factors:

The Court emphasized that even if several shapes lead to the same technical result, this existence is not a decisive factor in whether the design or shape of the product is determined solely by its technical function or the creativity of the product by the creator. Regarding the effectiveness of a mold in producing technical results, the Court found that “it should only be considered into account to the extent that these factors indicate what was taken into account in choosing the shape of the product concerned”. Likewise, the Court noted that the alleged infringer intentions are irrelevant given the originality of the product’s shape. Finally, the existing expired patent is considered relevant in that it helps the judge assess the reasons for the creator’s choice of a particular form.

Observations; The CJEU’s approach to conviction is similar to that of cases like Cofemel and Lego Brick. The CJEU followed the decision in the previous Cofemel case and set out the details of the current ruling. However, the verdict in the SAS Institute and BSA cases, which emphasized creative freedom of expression and the criteria of originality and thus solidly supported the present case, varies from case to case coincidence. In Painer (Case C-145/10), originality is defined as how the creator expresses his personality through the work, making free and creative choices.

The Advocate General, in his Opinion in Brompton Bicycle Ltd. It is expressly stated that the element of the creator’s intention must be taken into account. However, the Court has remained silent on the matter, and even the referring Court has not considered it. The CJEU rejected the Advocate General’s proposal insofar as the creator’s intention is to be taken into account rather than the intention of the alleged infringer. Factors such as in Doceram, so it can be considered that the Court of Justice does not intend to narrow the elements into an exhaustive list. The decision of the CJEU offers the national courts flexibility in deciding whether the design was the result of free elections or not but is limited by compliance with common functionality standards.

In practice, the submission to the CJEU is essential since it concerns the overlap of rights, i.e. the protection of designs (patent protection) and copyright protection. The work remains protected throughout the creator’s life and for 70 years after his death. However, the present judgment does not address the dangers of the accumulation of rights, despite the Advocate General having carried out his Opinion on Cofemel Case.

Conclusion: The verdict is beneficial to designers/manufacturers as original industrial designs can now receive long-term copyright protection. With regard to the overlap of rights, i.e. design and copyright protection, it is up to the courts to weigh carefully to ensure that copyright is not only used to obtain protection and therefore undermine the protection of other intellectual property rights that are for existing for a shorter period after the patent protection expires.

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.