Date
September 4, 2020
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Have you ever thought of how many intellectual property rights can ride a bicycle? I am pretty sure you didn’t, but this case will help you out. 

Dear readers, DesignWanted is happy to announce a new series dedicated to the protection of design, works, innovation, and Intellectual Property (IP).

This first articles, and the ones to follow, are written by the lawyers of the SIB LEX law firm in Milan, experts in the protection of IP rights. Each month we will share new cases of interest in the field.

Stay tuned, happy reading.

A bicycle can be protected by patents (if it embeds inventions, i.e. original solutions to technical problems), utility models (also known as little inventions), or designs (if the shape of the bicycle is new and original). Of course, also the bicycle’s trademark should be registered.

But, going back to the case, we should start from facts: Brompton is a company incorporated under English law whose founder is Mr. SI. 

Brompton company markets a folding bicycle, sold in its current form since 1987 (‘the Brompton bicycle’).

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Brompton Bicycle - leather seat
The Brompton Bicycle has been sold since 1987

The Brompton bicycle can have three different positions (a folded position, an unfolded position, and a stand-by position enabling the bicycle to stay balanced on the ground), and it was protected by a patent for an invention which has now expired.

The Brompton bicycle can have three different positions

Get2Get – a Korean company – markets a bicycle (‘the Chedech bicycle’) which is visually similar to the Brompton bicycle and which may fold, like the Brompton bicycle, into the three positions mentioned in the above paragraph.

Brompton Bicycle - Chedech Bicycle black
The Chedech Bicycle by Get2Get

On 21 November 2017, Mr. SI and the Brompton company brought an action before the tribunal de l’entreprise de Liège (Companies Court, Liège, Belgium) seeking a decision that Chedech bicycles infringe Brompton’s copyright and Mr. SI’s non-pecuniary (moral) rights and, consequently, an order that Get2Get cease its activities which infringe their rights and withdraw the product from the market.

In its defence, Get2Get contends that the appearance of the Chedech bicycle is dictated by the technical solution sought, which is to ensure that the bicycle can fold into three different positions. In those circumstances, such appearance could be protected only under patent law, not under copyright law.

Brompton claimed that the three positions of the Brompton bicycle can be obtained by shapes other than those given to that bicycle by Get2Get, which means that its shape may be protected by copyright.

vs Chedech Bike
The Bromptom Bicycle (top) vs. The Chedech Bicycle (bottom)

What is the answer of the Court of Justice?

The principle is that shapes necessary to obtain a technical result are excluded from copyright protection (due to the fact that they can only be patented). 

However, the European Court of Justice stated that copyright protection is in principle available to products whose shape is, at least in part, necessary to obtain a technical result (namely that the bicycle may be folded into three positions, one of which allows it to be kept balanced on the ground), insofar as “that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality”.

It is up to the tribunal de l’entreprise de Liège (Companies Court, Liège) to ascertain whether that bicycle is an original work resulting from intellectual creation reflecting the author’s personality

folded
The Brompton Bicycle being forlded

Takeaways and comments

This decision is really important since it allows readers to understand that shapes of products have multiple forms of protection which sometime could also join together. 

What we should take away from this?

That the shape of a product if performs a technical function cannot – in principle – access to copyright protection, but could benefit from the protection of patents (temporary limited)

However, the EU Court of Justice seems to open a window: if the shape is an original work resulting from intellectual creation it would appear to be protectable under copyright.

Is the shape of the Brompton bicycle an original work resulting from intellectual creation so as to deserve copyright protection?

This is not for us to say (but to the tribunal de l’entreprise de Liège). 

We will keep you updated.

What do you think? 

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 blue
The Brompton folding bicycle
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