The Accumulation of Protection in the Example of Industrial Designs and Works of Applied Art

Legal Insight

May 2023

Thanasis Ioannou, LL.M.

Abstracts: The cumulation of protection, i.e. the recognition and granting of protection under more than one law, in the example of industrial designs and works of applied art: how can one claim protection for the design of a jewellery/handbag/apparel etc. How can a designer of a design for a piece of jewellery, or a piece of jewellery, or a piece of jewellery, for a period of more than 70 years?

The cumulation of protection, i.e. the recognition and granting of protection to an intangible asset (industrial design, trade mark, patent) under more than one piece of legislation, is one of the most thorny issues in intellectual property law. The conditions and terms of protection of individual intellectual property rights differ and serve different purposes. Article 30 of the Presidential Decree on industrial designs allows the cumulative protection of industrial designs under intellectual property law, provided that the condition of originality is met. Case law is sceptical about cumulative protection in view of the problems it creates for competition and the qualitative differentiation between works of applied art and industrial designs. There is, of course, no doubt that the possibility of protecting, for example, a design for furniture, clothing or handbags for a period covering the entire life of the creator and 70 years afterwards is particularly attractive for those who design and market such products on a mass scale. Perhaps this would be a strong incentive to improve the quality and general characteristics of their products. However, this is one side of the coin, as we must also take into account the freedom of competition between entrepreneurs, which is clearly undermined by the creation of legal monopolies of such long duration.

1. Introduction

Intellectual property law, one of the most important sub-branches of commercial law, is in essence a network of more specific laws which provide protection for individual legally recognised and protected intellectual property rights. In particular, intellectual property law includes trade mark law, patent law, industrial design law and intellectual property law. Special mention should also be made of the law of unfair competition, which applies either in a complementary manner to the above-mentioned laws, covering any gaps in them, or fully and exclusively when a competitor has not registered his intellectual property product by following the relevant administrative procedure, either through conscious choice or omission or by failing to meet the legal requirements for the granting of the relevant intellectual property right. The common denominator of all intellectual property rights, despite their individual differences in terms of the conditions and duration of protection, is that they are rights in intangible property, i.e. rights in intangible products of human ingenuity and creativity, which are usually incorporated in or associated with products that are produced and widely marketed. A key issue of concern in intellectual property law is that of the overlapping scope of protection of different intellectual property rights and, by extension, the cumulation of protection under more than one body of law. The purpose of this briefing note is to investigate the possibility of cumulative protection of industrial designs under the provisions of the Copyright Act and to highlight the disadvantages this entails for competition.

2. Key legal provisions and definitions

According to Article 2 of the Copyright Act, an intellectual work is any original intellectual creation of words, art or science. Works of applied arts are also considered as such, provided that they meet the conditions for their classification as works, in particular the condition of originality. Our specific reference to works of applied art is not accidental, since they are the point of potential convergence between copyright law and industrial design law. These are works which, because of their utilitarian nature and their potential for commercial exploitation, appear at first sight to be incompatible with the concept of an intellectual work. Examples of works of applied art include furniture, clothing, handbags and fashion items in general, i.e. objects which serve, among other things, the practical needs of our everyday life. The reason why works of applied art are at the crossroads between intellectual and industrial property is due to the requirement of spirituality, which a creation must meet in order to qualify as an intellectual work. The concept of authorship is nothing other than the autonomy of a work in relation to any technical or utilitarian result that may be achieved through it. The spiritual work, that is to say, as a manifestation of the personality of its creator, is an end in itself. This means that, for example, in order for a chair to constitute a work of applied art and to benefit from the increased protection of intellectual property law, it must be considered an original creation, judged in its own right, which reflects the specificity of the designer's personality, irrespective of whether it is, for example, ergonomic or comfortable for its user. 

As regards industrial designs (two-dimensional creations) and models (three-dimensional creations), a legal framework for their protection at national level was first introduced in 1996. In particular, Law 2417/1996 contained a legislative authorisation for the adoption of a Presidential Decree regulating the details of its implementation, under which Presidential Decree 259/1997 was adopted. This Presidential Decree constitutes the current legislative framework in Greece for the protection of industrial designs. According to Article 3 of the aforementioned Decree, an industrial design is defined as 'the externally visible image of the whole or part of a product, which results from the particular characteristics of, in particular, the line, contour, colour, shape, form and/or materials of the product itself and/or the decoration it bears'. It is therefore easy to understand that industrial designs are creations of an aesthetic nature which improve the external appearance of products by making them more attractive to the consumer. In short, their purpose is to improve the marketability of the products in which they are incorporated. In order to understand this better, it is worth taking the example of a vacuum cleaner which has a particular design that is not related to its technical functions and distinguishes it from all competing vacuum cleaner models.

3. Protection conditions

Furthermore, according to Article 30 of the abovementioned Decree, industrial designs may also be protected by copyright if they are original. This Article establishes a system of so-called "partial cumulative protection" or "conditional protection". The consequence of the application of this system is that, in principle, the system of formal priority applies, provided that the conditions of the Decree are fulfilled, and cumulative protection under copyright law applies, irrespective of whether or not there is a registration, provided that the element of originality is present. Therefore, works of applied art in general and industrial designs in particular are not excluded a priori from the protection of intellectual property law on account of their utility and marketability, provided that they are also considered to be original creations. In simple terms, therefore, a particular piece of jewellery/collector's bag can, under certain conditions, be protected under both legal frameworks in parallel, which makes it more effective in terms of protection. The crucial element, therefore, is the freedom of design of the designer of the industrial design , i.e. the formulation of an industrial design should not be dictated solely by technical parameters and aspirations, but should be inextricably linked to the creative aspects of the designer's personality.

Originality is a vague legal concept, the specificity of which is primarily a matter for case-law. National case-law assesses originality on the basis of two alternative criteria, namely creative amount and statistical uniqueness respectively. Under the first criterion, in order to be considered original, the work must have an individual specificity or a minimum creative height such that it stands out and is distinguishable from everyday works or similar well-known works. Under the second alternative criterion, a work is considered original if it is statistically unique, i.e. where no one else with the same objective and under the same or similar circumstances could, in all probability, achieve the same creative result. The case law of the Court of Justice of the European Union has developed a more flexible criterion for diagnosing the originality of a work, as it is sufficient for it to be the personal intellectual creation of its author. Skill and substantial effort in the preparation of the work are of no legal significance, while what is decisive is the finding that the author made free and creative choices and that the work bears his or her personal stamp. However, this criterion has not yet been adopted by domestic case law.

In the context of industrial design law, the relevant legislative protection is granted subject to the essential conditions of novelty and individual character. It should be noted that the fulfilment of these conditions is only subject to review in the context of a counterclaim for invalidity before the civil courts or an application for invalidity filed with the Industrial Property Office in the case of national industrial designs, since applications for registration of industrial designs are subject only to a limited formal review. An industrial design is considered to be new if at the time of filing the application for registration no other identical design is available on the market. Individual character, which must be cumulative with the element of novelty and is a slightly more stringent and complex criterion, is established when the overall impression produced on the informed user by the registered design differs from that produced on the same user by any other design which has been made available to the public before the date of filing of the application.

However, the case-law in many judgments confuses the concepts of 'originality' on the one hand and 'novelty' and 'individual character' on the other hand, judging them uniformly and according to the same criteria. However, this trend in case law makes it difficult to distinguish between industrial designs and works of applied art and results in an unjustified parallel application of the two pieces of legislation.

4. Legislative examples of misinterpretation of the concepts of "originality" on the one hand and "novelty" and "individual character" on the other

The Athens Court of Appeal in its decision No 5863/2008 held that '[...] the manufacture of the design and jewellery in question (a brooch in the shape of a dragonfly) requires many tens of hours of very fine work and great effort, especially during the various stages of manufacture. In this way the unique aesthetic appearance of this is created according to the desire and contemplation of its maker. Thus, the above design and jewellery, due to the delicate aesthetics and shaping during its conception as a work, is distinguished for its originality and thus becomes an intellectual work eligible for legal protection. Moreover, in the circumstances set out above, that work is new and individual in character and is also protected cumulatively and in part by the legislation on industrial designs'. In the present judgment, the Athens Court of Appeal, in addition to making the effort and long hours of work required for the creation of the design a criterion of originality, committed a further defect, since it made a single finding, on the basis of exactly the same elements and legal arguments, of the originality, novelty and individual character of the design, holding that the design was entitled to cumulative protection under the law of intellectual property and the law of industrial designs.

In Judgment No 6489/1999 of the Athens Court of First Instance in relation to designs for cubes, drawers, blisters and boxes, it was held that those designs were not 'new' and did not have 'individual character' since similar objects were circulating on the market and that, as a result, they could not be protected as intellectual creations. In this case too, the concept of originality in copyright law was wrongly identified with the concepts of 'novelty' and 'individual character' in the field of industrial designs.

Another case of confusion in the interpretation and application of the above vague legal concepts can be found in Case No. 4091/2010 of the Athens Court of Appeal, where it was held that '[...] ]In the present case, there can be no question of statistical uniqueness, since the features of the plaintiff's contested products, which also have a utilitarian object, in terms of subject matter, conception, classification, appearance and overall shape, are found with insignificant variations in pre-existing and recently circulated creations of other manufacturers, so that they cannot be distinguished from them and do not constitute separate works worthy of protection[...]". In this case, the Court of Appeal equated the element of originality with that of novelty, holding that the absence of the element of novelty negates originality.

The legal inconsistency described above as regards the interpretation of the vague legal concept of 'originality' is repeated in the very recent judgment of the Athens Court of First Instance, No 2280/2022, which held that '[...] originality is the result of the personal contribution of the author, thanks to which the work presents a particular individuality, so that it is distinguished from the products of everyday human life. Individuality is often based on the notion of 'statistical uniqueness', which implies a comparison of the work with what already exists or with what could exist. In other cases reference is made to the element of creative style, by analogy with the inventive style of the patent. And it has been accepted in case law that the work must show individual specificity or else from a certain minimum threshold of creative style with a certain distance from the already known and self-evident works. However, the design in question, which appears on the jewellery (necklace) made available by the business of the first of the applicants, is not likely to be original, given that it is merely a combination of three well-known symbols, namely the eye of providence, the shape of a heart and the 16 rays around the eye, referring to the 'sun of Vergina'. These three symbols have always been used in jewellery design and silversmithing in general, and can be found in jewellery mounts by various designers with a similar design to the bandage. Indeed, the photographs produced by the first and second defendants show that jewellery with a design similar to that of the contested design is circulating [...] and is available for sale on the internet by at least two designers, and that the jewellery in question was posted at least as early as July 2017, that is to say, before the date on which the second applicant claims to have created the design in question (March 2018). In particular, the similarity between the second applicant's design and that of the second defendant is due to the fact that both are based on the combination of the heart and two archetypal symbols, which is why the design in question cannot be regarded as showing a minimum creative style which is at least some distance from the well-known archetypal symbols [...]'.

5. Legislative examples of the correct interpretation of the concepts of 'originality' on the one hand and 'novelty' and 'individual character' on the other

The Athens Court of Appeal clearly defined and gave the correct interpretation to the concepts of 'novelty', 'individual character' and 'originality' in its judgment No 2398/2008. In particular, it held that '[... ]In view of the aesthetic configuration described, this design (a brooch in the shape of a dragonfly) and henceforth the model of the jewellery are new and original with an individual character due to the intellectual work of its creator, who created the dragonfly insect and the whole impression in the specific form, the informed user, distinguishes it from other existing creations with the same theme and identifies its origin from the plaintiff's house, a fact known throughout the world, so that it is a separate work, which is worthy of protection under the aforementioned provisions, both as an intellectual creation and as an industrial design. That is so because the above evidence proves that, even before the registration of the applicant's design in 1996, jewellery inspired by the similar insect dragon or other insects had been circulated on the Greek market, however, no evidence has shown that a design and a piece of jewellery identical to that of the plaintiff had ever before been released on the Greek and international market, i.e. with the specific pre-described rendering of the insect, but also with the creative contribution of the creator of the jewellery, who rendered the dragonfly in a specific form and for this reason it is her personal creation[... ]".

With regard to clothing designs, the Athens Court of Appeal in its decision No. 4519/2010 did not accept the existence of originality with regard to them on the grounds that "[...] at least the specific designs, which the second plaintiff manufactured, compared to other models, including those of well-known fashion houses abroad, published in magazines, which the defendants submit, do not present originality and uniqueness within the meaning of Law 2121/1993, i.e. they are not original "fashion creations", with distinctive features that make them "different" from other previous, similar fashion designs, nor do they present an individual specificity, since such decorative elements are available in commercial shops and are widely used by fashion designers, in a similar way, who carry out various compositions, with or without aesthetic effect[...]'. A similar judgment was reached by the Thessaloniki Multi-Member Court of First Instance in its judgment No 3305/2020 in relation to wedding and christening jewellery. In particular, it accepted that '[...] the sixteen (16) items referred to above do not present originality and uniqueness within the meaning of Law No. 2121/1993, i.e. they are not original "creations", with distinctive features that make them "different" from other previous, similar designs of handmade baptismal-marriage jewelry, nor do they present an individual specificity, as their form (appearance) does not reflect the specificity of the human creative process[... ] The element of individuality of applied works of art is hardly recognised and therefore most of them are not protected, except under the provisions on unfair competition, provided of course that the conditions of the law are met. Furthermore, for these works, protection as designs is possible under the condition of their novelty. In short, the above judgment did not allow the cumulation of protection in respect of the jewellery in question, holding that it did not satisfy the condition of originality.

A typical jurisprudential example of the acceptance of the exceptional cumulative protection of industrial designs under the provisions of the Intellectual Property Law is the decision of the Court of Appeal of Piraeus No. 281/2005. In this case, the court accepted that decorative plaster table lamps in the shape of a church fulfilled the element of originality and therefore could benefit from the protection of intellectual property law, because "[... ] the plaintiff did not confine himself to merely copying the aforementioned constructions, which were the source of his inspiration, but created new, separate and clearly distinguishable works of art, in which he has imprinted his personality and added elements of his own creative inspiration, mainly in the way and details of their construction, their dimensions, decoration, colours and, where appropriate, their utility[...]'.

6. Conclusions

It follows from the foregoing that both works of applied art and industrial designs or models have a number of similarities, on the one hand because of their utilitarian nature and their purpose, which is to satisfy everyday needs, and on the other hand because of their aesthetic elements. They differ, however, as regards the conditions for their protection. First of all, works of applied art are protected as of right without any formalities being required. On the contrary, the right to an industrial design is acquired by filing an application and registering it in the relevant register. Furthermore, the substantive conditions for the protection of the above-mentioned intangible property are also related to each other in a qualitative relationship. Originality, in accordance with the foregoing analysis, in the case of works of applied art is translated as the personal stamp of the creator on them. In the case of intellectual property, the object of protection is essentially the work as an extension of the personality of its author. In contrast, industrial design law is dominated by different assessments more oriented towards the commercial success of consumer products through their aesthetic enhancement, which are expressed through the essential requirements of novelty and individual character. This is why industrial designs can only in exceptional cases be considered to possess creative value or statistical uniqueness. The elegant configuration of a product is not sufficient to confer originality on it, and the absence of the elements of novelty and individual character is legally irrelevant from the point of view of the diagnosis of originality. An industrial design may thus give a different overall impression from the pre-existing ones, but nevertheless lack creative height or statistical uniqueness, precisely because originality constitutes a qualitative leap in relation to individual character.

In summary, the concepts of 'novelty' and 'individual character' must be clearly distinguished from the concept of 'originality', as they are based on different assessments by the legislator and relate to different objects of protection. The overlap between copyright law and industrial property law and, by extension, their cumulative application, as is also required by the current system of 'conditional cumulation' or 'partial cumulative protection', must be treated as an exceptional circumstance and only be accepted when the strict criterion of originality ('the personal stamp of the author') is actually met in relation to an industrial design and not, as a general rule, for every industrial design that exhibits an element of aesthetics. It is also important to consider the adverse effects on free competition of applying a system of absolute and unconditional cumulative protection, particularly in view of the increased term of protection of copyright, which covers the entire lifetime of the author and extends to 70 years after death. If the requirement of originality were to be disregarded, this would also directly contravene the legal provision on the limited term of protection of industrial designs (maximum 25 years), which was introduced in order to ensure freedom of competition in the market. At this point, and in conclusion, it would be appropriate to refer to the particularly pertinent characterisation of industrial designs in intellectual property law theory as 'small coins' of intellectual property, since it encapsulates the essence of the concerns set out in this briefing note.