In February 2020, we discussed the opinion of Advocate General Campos Sánchez-Bordona ("AG”) in the case of SI, Brompton Bicycle Ltd (‘Brompton’) v Chedech/Get2Get, Case C-833/18.

Over the summer, the Court of Justice of the European Union (“CJEU”) ruled on AG’s earlier opinion and the decision has taken many by surprise and is likely to have ramifications for intellectual property rights holders, and those third parties seeking to offer alternative products, for years to come.

Reminder of the facts

Patent protection of Brompton’s bicycle expired a while ago, which left it vulnerable to replication by third parties. As such, in this case before the CJEU, Brompton argued that the Get2Get bicycle infringed its copyright, under EU law, in the appearance of the Brompton bicycle.

Since copyright lasts for decades longer than patents, this relatively novel argument would extend Brompton’s rights in its famous bike far longer than usually expected.

Get2Get argued that the Brompton bicycle’s appearance could not be protected by copyright, because it is designed in a way which is necessary to obtain the technical result of the three position folding mechanism.

Brompton argued that there were other bicycles on the market that adopted the folding mechanism while maintaining a different appearance to that of the Brompton bicycle, therefore showing that Brompton had a creative choice in designing its bicycle.

As we discussed in our earlier blog, AG had concluded that the Brompton bicycle’s appearance was “exclusively dictated by its technical function” and, as such, could not be protected by EU copyright law. However, Brompton did not fold and continued onto a decision by the CJEU.

CJEU

The CJEU accepted that a product cannot be protected by copyright “where the shape of the product is solely dictated by its technical function”. It also accepted that the shape of the Brompton bicycle “appears necessary to obtain a certain technical result”.

Nonetheless, the CJEU found that the Brompton Bicycle is an original work through which its author, Andrew Ritchie, had expressed his creative ability in an original manner by making free and creative choices in such a way that the bicycle’s shape reflects his personality. In short, AG’s opinion was not followed.

The CJEU therefore concluded that copyright may subsist in a product whose shape is necessary to obtain a technical result, provided the shape is an original expression of the author's creative ability and personality.

What this means for you

In conclusion, creative individuals and businesses rejoice – as this decision confirms that you may be able to protect your product from third party copying, despite your product’s shape being necessary to obtain a technical result, if you can demonstrate that its shape is also an original expression of your creativity which reflects your personality. This means that, as with Brompton’s folding bicycle, a patented product may enjoy copyright protection when the patent expires.

We are a specialist IP team based in London and led by Philip Partington. We advise clients, large and small, on their IP rights.