Christina Koliatou, LL.M, PgCert
George Psarakis LL.M. (mult.), PgCert
(republished from startup.gr)
Summary: This article analyses the ways of protecting the design of a website through industrial design and unfair competition law.
When in 2005 a German Company had copied the structure and design of Facebook's website, few people realized the benefit of the practice of website usurpation. Indeed, in 2007 this website (StudiVZ) was sold for EUR 75 million.
In June 2009, the German Court of Justice, to which Facebook, among others, appealed, ruled that the two websites were indeed almost identical in design and structure, but that since the 'facebook.com' website was not yet widely known to the German public (in November 2005, when the 'copying' took place), it was held that there was no infringement of the design (under the provisions on the protection of unfair competition).
But what is the way to protect the design of a website today?
The most appropriate way is to register the page as an industrial design, in particular as a Community design. We are used to thinking of a piece of furniture, a piece of jewellery or a car when we talk about industrial design. However, it is not disputed that a design within the meaning of the law can also be a website. And this can also be protected under the framework of Community design registration. Once the registration of the website has taken place (which must take place within 12 months of its publication on the internet), the proprietor of the website can automatically protect itself against infringers by bringing the relevant legal proceedings before the Greek or foreign courts, requesting, inter alia, the removal of the infringement and its omission in the future by withdrawing the specific design of the identical website. Of course, in many cases the mere fact of registration will act as a deterrent, achieving the objective of protection at a level well before the legal conflict.
On a practical level, in order for an industrial design to be registered nationally, the relevant application for registration by the Industrial Property Organisation ("IPO") must be accepted after examination. On a European level, it is registered after an application for registration by the European Union Intellectual Property Office ("EUIPO"). In the context of this registration, the competent Office carries out a formal and rapid examination (without examining the elements of novelty and individual character), proceeding further to its registration. The paradox, however, is that although in a very easy and low-cost way businesses can protect their website designs, no Greek business has undertaken a similar registration. On the contrary, at the Intellectual Property Office in Alicante, the number of registrations of Community designs by other European companies is in the dozens. For example, the website of the German telecommunications company Deutsche Telecom AG, the Austrian company 'Profibaustoffe Austria GmbH', the Austrian manufacturer and marketer of high-quality building materials, the English design company 'Shutterstock LtD', etc.
However, even after the formal registration, a precondition for the owner company to qualify for legal protection is that its website must be 'new and individual'. This means, in simple terms, that no other identical website must have been made available to the public - by the time the application for registration is filed - while at the same time the specific design and structure of the website must create an overall unique impression for the informed user compared to any other website that has already been made available to the public. In the context of assessing the individual character of the website, the decisive factors include, inter alia, the sector in which the website belongs, the degree of freedom of the author in creating it, the possible saturation of technological development, which may make the informed user more sensitive to the differences between the websites compared, and the result of the comparison of the overall impression (in terms of layout, colours, font, images or expressions, layout, colours, font, images or expressions, etc.).
At the same time, in addition to protection under industrial design law, which requires registration of the right with the OHIM or EUIPO, unfair competition law may also apply. This law is based on a 1914 law (!), which was enacted, inter alia, to protect the distinctive features of products. In fact, it was held that a company's shop window was also eligible for protection. Today, therefore, when the website has replaced the shop window of many businesses, the protection afforded by this law is sufficient to protect the relevant rights to the design and structure of the website. A key requirement is the establishment of the website in transactions as a distinctive feature. This can be demonstrated through consumer studies and is usually obtained through advertising, promotion and a particular design. Obviously, the traffic statistics of a site also play a decisive role; the more unique visits it has, the more it is protected against third parties wishing to copy its design and structure.
But when can we consider the design of one website, under the Unfair Competition Act (i.e. without having to register its design), to be an illegal copy of another website? The answer is where the first website published in time has acquired distinctive power and, at the same time, the publication of the identical design of the second website creates a risk of confusion for the consumer, who may be misled, either as to the origin of the products or services of a certain business, or as to the identity of the business, or as to the existence of an economic partnership or relationship between two businesses. In order to establish the likelihood of confusion, the following criteria should be considered:
- The sector of activity of the opposing undertakings. For example, when one undertaking copies the website design of another undertaking that is a major competitor of the first undertaking, the risk of confusion among consumers is increased. In other words, the user may visit the competitor's site, which is likely to appear on the search engine results page close to the original page.
- The similarity in the domain name of the websites being compared. If, for example, the design of the website is the same and at the same time the domain name of the businesses differs in only a few points, then there is still a risk that the user will be misled and visit the competitor's page when he/she wanted to visit the original page.
- The similarity in the general impression given to the visitor by the compared websites. This is the most important element that must be established in order to have an infringement issue, with emphasis on the layout, colour, font, spacing of embedded images or text, the way they are presented, the identical use of expressions - terms important for the offer of services, the use of identical symbols or logos, etc.
The rapid growth of the Internet today and the establishment of the presence of businesses in the online space, in which they either practice, or promote and advertise their activity, make the website of each business, the modern "showcase" and therefore, a valuable tool and means of connection with existing and future customers. As a result, it becomes more than necessary to provide legal protection against competitors. The law of industrial property, in particular industrial design law, both at national and Community level - among other laws, such as unfair competition and intellectual property law - provides this protection more fully, and it is certainly expected to be extended in the near future, given the new electronic reality that has emerged and is constantly generating a variety of cases.