Provisional text

delivered on 19 June 2025 (1)

Case C‑323/24

Deity Shoes, S.L.

Mundorama Confort, S.L.,

Stay Design, S.L.

(Request for a preliminary ruling from the Juzgado de lo Mercantil n° 1 de Alicante (Commercial Court No 1, Alicante, Spain))

( Reference for a preliminary ruling – Intellectual and industrial property – Community designs – Regulation (EC) No 6/2002 – Article 4 – Conditions for the protection of a design – Novelty – Individual character – Visual characteristics predetermined by a third party – Customisation of components offered in an existing catalogue – Degree of customisation required – Freedom of the designer in developing the design – Possibility of protecting the appearance of all or part of a product which is produced on the basis of known fashion trends )

I.Introduction

1.‘These boots are made for walkin’ and that’s just what they’ll do’. (2) In the case-law of the General Court on the interpretation of Regulation (EC) No 6/2002, (3) it is generally accepted that the freedom of the designer of a product (for example, a shoe) is limited by that product’s technical function (for example, the fact that a shoe is to be worn on a foot and must be fit for a particular purpose such as walking or running), as well as by statutory requirements applicable to the product which result in a standardisation of certain of its features. (4) The present case raises, inter alia, the following question: is that freedom also limited by fashion trends?

2.The dispute in the main proceedings concerns three companies in the shoe business, respectively, Deity Shoes S.L., on the one hand, and Mundorama Confort S.L. and Stay Design S.L., on the other hand. The first of those companies claims that the other two have infringed its Community designs for various models of shoes (‘the contested designs’). Mundorama Confort and Stay Design counterclaim that the contested designs are invalid, since they are based on existing designs, shown in the catalogues of Deity Shoes’ suppliers, from which they differ only in minor respects linked to the customisation of, for example, the sole, laces or buckles, which are influenced by recent fashion trends. In their view, the contested designs are thus not the result of any ‘genuine design activity’, ‘intellectual effort’ or innovation.

3.By its questions, the Juzgado de lo Mercantil n° 1 de Alicante (Commercial Court No 1, Alicante, Spain) asks the Court of Justice, in essence, to determine whether, in those circumstances, a design can still enjoy protection as a registered or unregistered (5) Community design under Regulation No 6/2002. Furthermore, it asks whether fashion trends can restrict a designer’s freedom in such a way that minor differences may be sufficient for the design at issue to give a different overall impression from one or more prior designs, thus conferring on the design at issue an ‘individual character’, within the meaning of Article 6 of Regulation No 6/2002.

II.Legal framework

4.Article 4 of Regulation No 6/2002, which is entitled ‘Requirements for protection’, provides that:

‘1. A design shall be protected by a Community design to the extent that it is new and has individual character.

…’

5.Article 5 of that regulation, which is entitled ‘Novelty’, states that:

‘1. A design shall be considered to be new if no identical design has been made available to the public:

(a)in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public;

(b)in the case of a registered Community design, before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority.

2.Designs shall be deemed to be identical if their features differ only in immaterial details.’

6.Pursuant to Article 6 of Regulation No 6/2002, which is entitled ‘Individual character’:

‘1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public:

(a)in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public;

(b)in the case of a registered Community design, before the date of filing the application for registration or, if a priority is claimed, the date of priority.

2.In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.’

7.Article 10 of that regulation, which is entitled ‘Scope of protection’, states that:

‘1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.

2.In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.’

8.Article 14 of Regulation No 6/2002, which is entitled ‘Right to the Community design’, provides that:

‘1. The right to the Community design shall vest in the designer or his successor in title.

…’

9.Article 25 of that regulation, which is entitled ‘Grounds for invalidity’, states that:

‘1. A Community design may be declared invalid only in the following cases:

(a)if the design does not correspond to the definition under Article 3(a);

(b)if it does not fulfil the requirements of Articles 4 to 9;

(c)if, by virtue of a court decision, the right holder is not entitled to the Community design under Article 14;

…’

III.Facts, procedure before the Court and the questions referred

10.On 10 December 2021, Deity Shoes brought an action before the Juzgado de lo Mercantil n° 1 de Alicante (Commercial Court No 1, Alicante) against Mundorama Confort and Stay Design, alleging an infringement of the contested designs.

11.On 12 April 2022, Mundorama Confort and Stay Design filed a counterclaim, seeking a declaration of invalidity of those designs. (6)

12.In particular, those companies claimed that no innovation or ‘genuine design activity’ was involved in the development of the contested designs and that those designs were not the result of any ‘intellectual effort’. Save for a few customised elements (for example, the colour, some materials, the position of the buckles, laces and other decorative elements), the contested designs represented the models of shoes contained in the catalogues provided to Deity Shoes by their Chinese suppliers (‘the suppliers’). In Mundorama Confort’s and Stay Design’s view, those designs thus fail to meet the conditions relating to ‘novelty’ and ‘individual character’ laid down, respectively, in Articles 5 and 6 of Regulation No 6/2002.

13.The referring court notes that price plays an important role in Deity Shoes’s business, which aims at high-volume sales. Since any change or customisation brought to the designs contained in the suppliers’ catalogues leads to an increase in costs, there is no real incentive for a company such as Deity Shoes to make substantial changes to the models of shoes shown in those catalogues.

14.The referring court also points out that the various customisation options (as to, for example, the colour, the materials and the position of buckles, laces or other decorative elements) are already shown in the suppliers’ catalogues. Furthermore, the models shown in those catalogues, their customisation options, and the contested designs are all influenced by known fashion trends. That court seeks to know whether those fashion trends could be regarded as restricting the freedom of the designer in the same way that the technical function of a product or the statutory requirements that product is subject to sometimes do.

15.In the light of those elements, the Juzgado de lo Mercantil n° 1 de Alicante (Commercial Court No 1, Alicante) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

(1)‘(1) In order for a design to be covered by the system of protection under [Regulation No 6/2002], is it necessary for there to be a genuine design activity in such a way that the design is the result of the intellectual effort of its creator? … In that regard, may a combination of components on the basis of [existing] models [be regarded as a genuine design activity, when its] features of appearance are for the most part predetermined by [suppliers], with the effect that modifications to certain features are to be regarded as ad hoc and incidental …?

(2)In the light of the foregoing, may all or some of the features of appearance of a product resulting from the customisation of designs that are offered by Chinese [suppliers], in accordance with those [suppliers’] catalogues, be regarded as having [“individual character”], within the meaning of Article 6 of [Regulation No 6/2002], where the activity of the owner of the design is limited to marketing those designs in the [European Union] without modification or with specific modifications of components (such as soles, rivets, laces, buckles and so forth) and the features of appearance are predetermined for the most part by the [suppliers]? In that regard, is it relevant that the components … are [themselves already] offered by [the suppliers] in [their catalogues]?

(3)Must Article 14 [of Regulation No 6/2002] be interpreted as meaning that a person may be regarded as the [“designer”] in relation to a design where, on the basis of a [prior] design offered by [suppliers] in accordance with a catalogue, [that person] has merely customised that prior design by modifying components … offered by the [supplier], without having designed those components]? In that regard, is it necessary to prove a specified degree of customisation in order to demonstrate that the final form departs significantly from the [prior] design and, thus, that authorship may be claimed?

(4)Without prejudice to the foregoing, in a case such as the [one at hand], in view of the particular characteristics of footwear designed on the basis of [suppliers’] sample books and, in so far as the “design [activity]” is limited to selecting existing designs from a sample book and, where appropriate, to varying some of their components …, in accordance with fashion trends, must it be understood that those fashion trends: (a) restrict the designer’s freedom in such a way that minor differences between the registered (or unregistered) design and [the prior design] are sufficient to give a different overall impression or, conversely, (b) [diminish] the individual character of the registered (or unregistered) design with the effect that elements or components [which result from known fashion trends] are of less importance in the overall impression [produced] on the informed user … when compared with another [prior design]?’

16.The request for a preliminary ruling, dated 13 December 2023, was lodged at the Registry of the Court of Justice on 2 May 2024. Deity Shoes and the Commission submitted written observations. No hearing was held.

IV.Analysis

17.Article 4(1) of Regulation No 6/2002 provides that two conditions must be met for a design to be protected as an unregistered or registered ‘Community design’ under that regulation: the design must be ‘new’ and it must have ‘individual character’. For a design to be new, and therefore fulfil the first condition, no identical design must have been made available to the public either before the date on which the design in respect of which protection is claimed has first been made available to the public (7) (in the case of unregistered Community designs) or before the date of filing of the application for registration of the design in respect of which protection is claimed (in the case of registered Community designs). (8) The second condition, concerning the ‘individual character’ of the design, requires that design to produce an overall impression on the informed user that differs from that produced on such a user by any design which has been made available to the public before the abovementioned dates. (9)

18.Within the context of those provisions, the questions of the Juzgado de lo Mercantil n° 1 de Alicante (Commercial Court No 1, Alicante) boil down, in essence, to two issues. The first issue (at the heart of the first part of Question 1 and Question 3) is whether, in order to benefit from protection as a Community design, a design must be the result of the designer’s ‘genuine design activity’ or ‘intellectual effort’. I will start by explaining why I consider that those factors have no bearing in the present case (Section A). The second issue (encapsulated in the second part of Question 1 and Questions 2 and 4) relates to whether a design can benefit from protection as a Community design where it is pre-determined by prior designs contained in the catalogues of suppliers and where it differs from those designs only in certain, minor elements of customisation (also presented in those catalogues), which are influenced by fashion trends. In that regard, the referring court seeks to know whether fashion trends can be regarded as restricting the designer’s freedom in such a way that minor differences between one or more prior designs and the design at issue may be sufficient for the latter to give a different overall impression from the former and, thus, have ‘individual character’, within the meaning of Article 6 of Regulation No 6/2002 (Section B).

A.Whether a Community design must be the result of a ‘genuine design activity’ or ‘intellectual effort’ (the first part of Question 1 and Question 3)

19.The answer to the first issue raised by the referring court is, in my view, rather straightforward.

20.As I have already explained in point 17 above, for a design to benefit from protection as a registered or unregistered Community design, two conditions, relating, respectively, to the ‘novelty’ and ‘individual character’ of the design, must be met.

21.Those two conditions are exhaustive, and Regulation No 6/2002 does not contain any additional condition to the effect that a ‘genuine design activity’ must take place in producing the design or that the latter must be the product of an ‘intellectual effort’, to use the various terms employed by the referring court in its request for a preliminary ruling. In fact, both Mundorama Confort and Stay Design themselves recognise before the referring court that neither Article 4(1) of that regulation (which lists the requirements for protection) nor Article 25(1)(b) thereof (which concerns the invalidity of a Community design for failing to comply with those requirements) refers to such ‘genuine design activity’ or ‘intellectual effort’.

22.Moreover, it seems to me that, by using those terms, the referring court actually wishes to know whether a condition similar to that of ‘originality’ set out in the Court’s case-law relating to the interpretation of Directive 2001/29/EC (10) applies as regards the protection of Community designs. Indeed, the Court has ruled that, for a subject matter to be capable of being regarded as original and enjoy protection under Article 2(a) of that directive, it is both necessary and sufficient that the subject matter reflects the personality of its author, as an expression of his or her free and creative choices. (11) The various parts of a ‘work’ thus enjoy protection, provided that they contain elements which are the expression of the intellectual creation of the author of the work. (12)

23.In my view, it is clear, however, that no similar condition must be fulfilled for a design to be protected as a Community design. In fact, the Court has stated that the EU legislature has considered that ‘subject matter protected as a design [is] not as [a] general rule capable of being treated in the same way as subject matter constituting works protected by Directive 2001/29’. (13) Besides, ‘the protection of designs, on the one hand, and copyright protection, on the other, pursue fundamentally different objectives and are subject to distinct rules’. As the Court has explained, ‘the purpose of the protection of designs is to protect subject matter which, while being new and distinctive, is functional and liable to be mass-produced’, whilst, ‘for its part, the protection attached to copyright, the duration of which is significantly greater, is reserved to subject matter that merits being classified as works’. (14)

Turning now to whether the conditions of ‘novelty’ and ‘individual character’ must themselves be interpreted in the sense that they require the designer to have performed a ‘genuine design activity’ or engaged in an ‘intellectual effort’, I begin by noting that those conditions relate, as the Commission and Deity Shoes point out in their observations, to the appearance of the design, in isolation from how it was created and, thus, from any ‘intellectual effort’ or creative activity of the designer. Indeed, Article 3(a) of Regulation No 6/2002 defines the term ‘design’ as ‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation’. (15)

26.Moreover, the condition relating to ‘novelty’ merely means, as I have explained, that no identical design has previously been made available to the public. It follows that that condition requires a comparison between the design for which protection as a Community design is requested or whose validity is challenged and the existing design corpus. It does not call for an assessment of whether the design in question is the result of a particular ‘intellectual effort’ or ‘genuine design activity’.

27.The same is true as regards the condition relating to ‘individual character’. In that regard, I note that recital 14 of Regulation No 6/2002 states that ‘the assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him [or her] by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated…’.

28.Having said that, I admit, first, that that recital also indicates that, when examining whether a design has an ‘individual character’, account should be taken of ‘the industrial sector to which [the design] belongs and the degree of freedom of the designer in developing the design’. (16) Article 6(2) of Regulation No 6/2002 employs similar wording, as it provides that ‘in assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.’ Arguably, that could imply that the ‘genuine design activity’ or ‘intellectual effort’ behind the development of the design must be considered.

29.However, it is clear to me that the reference to the ‘freedom of the designer’ in recital 14 of Regulation No 6/2002 and Article 6(2) thereof cannot be interpreted in that sense; quite the contrary. In fact, the case-law of the General Court which I have mentioned in the introduction (17) illustrates that Article 6(2) has been understood to mean that protection as a Community design may not be denied merely because some features of the design are dictated by constraints linked to, for example, the technical function of the product (I will address this issue in Section B below). Put simply, a design of a shoe shall not be refused protection as a Community design merely because its overall shape resembles that of a foot.

30.Second, the referring court notes, in the Question 3, that Article 14 of Regulation No 6/2002 qualifies the ‘designer’ as the person who has ‘developed’ the design. In the light of that provision, that court seeks to know whether, for a design to be protected as a Community design, it is necessary for the person having developed it to have engaged in a ‘genuine design activity’ or ‘intellectual effort’ in order to be regarded as its ‘designer’. Again, I do not share those doubts.

31.To begin with, I note that that Article 14 of Regulation No 6/2002, which is entitled ‘Right to the Community design’, provides, in its paragraph 1, that ‘the right to the Community design shall vest in the designer or his [or her] successor in title’. Paragraphs 2 and 3 of that provision detail the rules which apply where two or more persons have jointly developed the design, as well as where the design was ‘developed by an employee in the execution of his [or her] duties or following the instructions given by his [or her] employer’.

32.In the light of those elements, it is clear to me that the purpose of Article 14 of Regulation No 6/2002 is to determine in which person or entity the right to the Community design shall be vested, rather than to make the ‘novelty’ and ‘individual character’ of the design dependent on the ‘genuine design activity’ or ‘intellectual effort’ of the designer.

33.In that regard, I would also point out that the concept of ‘designer’ used in that provision must not be confused with that of ‘author’, used in Directive 2001/29 which concerns copyright and related rights. When interpreting that directive, the Court has consistently linked the concept of ‘work’ to that of ‘author’. (18) However, no similar link between ‘work’ and ‘author’ – or, rather, ‘design’ and ‘designer’ – exists under Regulation No 6/2002. Protection as a Community design may be granted without it being necessary to consider any attribute of its designer (such as his or her personality, creative choices or intellectual creation). Article 14 of Regulation No 6/2002 makes clear that the identity of the designer is relevant when determining in which person or entity protection shall be vested, not when assessing whether the design can be protected as a Community design. In that sense, the author of a work, under Directive 2001/29, and the designer of a Community design, under Regulation No 6/2002, are held to different standards: an author must produce an original work, which must reflect the author’s personality, whilst a designer merely needs to develop a design which is ‘new’ and possesses an ‘individual character’.

34.In my view, it follows from those elements that, for a design to enjoy protection as a Community design under Regulation No 6/2002, it is not necessary to show that such a design is the result of a ‘genuine design activity’ or ‘intellectual effort’ of the designer. Nor must the person or entity having developed the design have engaged in such ‘genuine design activity’ or ‘intellectual effort’ to be regarded as a ‘designer’.

B.The relative importance of minor differences between a design and a prior design in a situation where those differences are influenced by fashion trends (the second part of Question 1 and Questions 2 and 4)

35.The second issue raised by the referring court (in the second part of Question 1 and Questions 2 and 4) concerns, specifically, the ‘individual character’ of the design, laid down in Article 6 of Regulation No 6/2002.

36.I begin by recalling that, as the General Court has stated, a design has an ‘individual character’ if it produces an overall impression of difference or lack of ‘déjà vu’, from the point of view of an informed user, in relation to any previous presence in the design corpus, without taking account of any differences that are insufficiently significant to affect that overall impression, but taking account of differences that are sufficiently marked so as to produce dissimilar overall impressions. (19)

37.Furthermore, as I have explained in point 27 above, as part of that assessment, the designer’s degree of freedom in developing the design must be taken into account. The General Court has recognised that, in that regard, one must consider the constraints imposed by the technical function of the product (or an element thereof), as well as by statutory requirements applicable to the product which result in a standardisation of certain features and are, thus, common to all the designs applied to the product concerned. (20)

38.It has also clarified that the designer’s freedom must be viewed as a factor that serves to qualify the assessment of the individual character of the design at issue, rather than as an independent factor determining the required degree of difference between two designs. (21) In concrete terms, that means that the following rule of ‘inverse proportionality’ (22) applies: the more the designer’s freedom in developing the design at issue is restricted, the more likely minor differences will be sufficient to produce a different overall impression on the informed user.

39.It follows that a high degree of freedom for the designer strengthens the conclusion that designs without significant differences produce the same overall impression on the informed user and, consequently, that the design at issue does not have individual character. Conversely, a low degree of freedom for the designer supports the conclusion that sufficiently marked differences between the designs produce a different overall impression on the informed user and, consequently, that the design at issue does have an individual character. (23)

40.Although those statements of the General Court have yet to be confirmed by the Court of Justice, I fully agree with their content.

41.Let me go back to the example which I have previously used and which is central to the present case. A shoe is meant to be worn on a foot. Due to that technical function, a design of a shoe must necessarily have a shape that is elongated enough for a foot to fit into it. That technical function undoubtedly limits the designer’s freedom, and, in those circumstances, less significant differences linked to, for example, the heel (its height and shape) or the shape of the shoe tip (pointy, round or square) must be given greater importance in the overall impression of the product, (24) based on the rule of ‘inverse proportionality’ which I have just explained.

42.In my view, it is only logical that greater importance be given to those less significant differences in those circumstances. To begin with, it is coherent with the fact that Regulation No 6/2002 requires the assessment of the ‘individual character’ of the design to be performed from the perspective of the ‘informed user’. (25) The Court has ruled that ‘the qualifier “informed” suggests that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them.’ (26) Such a user is, therefore, able to perceive which features of the design may be linked to the technical function of the product or its standardisation due to applicable statutory requirements and to attach more importance to features which do not fall within either of those two categories.

43.Furthermore, if such less significant differences were not given enough weight when the designer’s freedom is limited in such circumstances, then it would be very difficult for a design to benefit from protection in the European Union. In essence, Regulation No 6/2002 would enable an operator (the first to gain protection for a design of the given product) to gain a monopoly over features which are, in practice, common to all the designs of that product. As the Court has explained, that would enable such an operator to benefit, with regard to the product, from exclusive protection which is, in practice, equivalent to that offered by a patent, but without being subject to the conditions applicable for obtaining the latter, which would prevent competitors offering a product incorporating certain functional features or limit the possible technical solutions. (27) That would run contrary to the objectives of EU design law, which, pursuant to recital 7 of that regulation, are to provide ‘enhanced protection for industrial design’ and to encourage the ‘development of new products and investment in their production’. It would also deprive Article 8(1) of Regulation No 6/2002, pursuant to which ‘a Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function’, of its full effectiveness.

44.Having made those remarks, it remains for me to clarify whether ‘fashion trends’ can be regarded as limiting the appearance of a design, in the same way that the technical function or standardisation of certain features of the product do. If that were the case, then, as the referring court explains in Question 4, minor (or less significant) differences between the registered or unregistered design at issue and a prior design may be sufficient for the design at issue to produce a different overall impression on the informed user.

45.In that regard, the General Court has found that the question whether a design does or does not follow a general design trend is not relevant to the assessment of whether there are limits to the designer’s freedom. It first made that clarification in the judgment in Shenzhen Taiden v OHIM – Bosch Security Systems (Communications equipment). (28) In that case, the design at issue represented a conference unit (that is to say, the microphone system usually placed at the front of each desk in a conference room). The applicant had claimed that many features of the design were dictated not only by the technical function of the device, but also by the existence of a general trend favouring small, flat, rectangular devices, often including hinged elements. However, the General Court rejected that claim. In a subsequent judgment, it explained that its refusal to allow a general design trend to be regarded as a factor that restricted the designer’s freedom had been based on the fact that it was precisely that freedom which allowed the designer to discover new shapes and new trends or even to innovate in the context of an existing trend. (29)

46.In my view, the present case provides the Court with the opportunity to confirm that approach.

47.Indeed, first, whereas Regulation No 6/2002 does not purport to grant protection for features linked to the technical function of a product or the statutory requirements applicable to it, it was introduced to make possible the protection of, inter alia, features linked to fashion trends as elements of a Community design. (30) The fashion sector produces a large number of ‘collections’ with a relatively short market life. That creates a demand for efficient, short-term design protection, which is coherent with the system put in place by that regulation. (31)

48.Second, protecting features linked to fashion trends encourages innovation, in line with the objective of Regulation No 6/2002, which I have recalled in point 42 above. For example, authors of fashion magazines now refer to a trend where many types of shoes – including ballet flats, sneakers and cowboy boots – are being styled with the ‘Mary Jane’ buckle. (32) If those designs are protected under the EU design system, then other operators or designers are prevented from copying them and are encouraged to create new designs.

49.Third, features linked to fashion trends also differ from those linked to the technical function of the product or the applicable statutory requirements to the extent that the latter are both inevitable (in the sense that all designs of the product in question must necessarily comply with them) and permanent or long lasting. I struggle to see how a similar conclusion could apply as regards features linked to fashion trends, which are, by nature, ephemeral.

50.I add that design trends are intrinsically linked to ‘market expectations’, which, by nature, are highly fluctuating. In that regard, the General Court has already ruled that consumer expectations do not constitute a constraint that necessarily limits the degree of freedom of a designer, and that the fact that a general design trend is capable of meeting the expectations of relevant consumers cannot be regarded as a factor which restricts the designer’s freedom, since that freedom enables the designer to discover new shapes and new lines or even to innovate in the context of an existing figurative trend. Consequently, ‘potential market expectations’ shall not be taken into account in order to determine the designer’s degree of freedom. (33)

51.In the light of those elements, I am of the view that fashion trends cannot be regarded as restricting the designer’s freedom in such a way that minor differences between prior designs and its unregistered or registered design may be sufficient for the latter to give a different overall impression from the former and, thus, have ‘individual character’, within the meaning of Article 6 of Regulation No 6/2002.

52.Having made those remarks, I recall that, before the referring court, Mundorama Confort and Stay Design appear to consider that the contested designs do not have ‘individual character’, within the meaning of Article 6 of Regulation No 6/2002, because they are based on prior designs contained in the suppliers’ catalogues and differ from those designs only in minor respects, linked to the customisation of, for example, the sole, laces or buckles.

53.In that regard, I note that the Court has already ruled, in essence, that a design may be eligible for protection as a Community design even if it is made up of specific features or parts of earlier designs, so long as it produces on the user a different overall impression than those earlier individualised and defined designs. (34)

54.In my view, a Community design must not therefore be declared invalid merely because it consists of limited customisation from one or more prior designs. That conclusion is consistent with the objectives of Regulation No 6/2002 which I have recalled in point 42 above.

C.Implications for the main proceedings

55.The findings that I have made in the previous section lead me to formulate the following remarks as regards the case in the main proceedings.

55.On the one hand, the mere fact that the differences between the contested designs and the prior designs included in the catalogues of Deity Shoes’ suppliers (in casu, elements of customisation linked to the sole, laces or buckles of the shoe represented in the contested designs) are based on fashion trends does not necessarily mean that those elements must be given lesser importance in the assessment of the overall impression which those designs create on the ‘informed user’ and, therefore, of their ‘individual character’. Unlike the technical function of the product or the statutory requirements to which the latter may be subject (which result in a certain standardisation of the product), fashion trends must not be viewed as a constraint or limit on the freedom of the designer. As the example of the ‘Mary Jane-ification’ of shoes mentioned in point 47 above shows, attaching a buckle on a shoe can (sometimes) go a long way in terms of producing a different overall impression and, thus, of conferring ‘individual character’. Likewise, the mere fact that the contested designs result from the customisation of prior designs is not an obstacle to their protection as Community designs and must not, in and of itself, lead to their invalidity.

56.On the other hand, whether the contested designs have an ‘individual character’, within the meaning of Article 6 of Regulation No 6/2002, and are eligible for protection as a Community design, still depends on whether the differences between those designs and the prior designs are sufficiently marked or relate only to immaterial details – an assessment which it is for the referring court to perform. In that regard, I would limit myself to recalling that Regulation No 6/2002 does not aim to protect, as a Community design, a design which, save for immaterial differences, is a mere ‘copy and paste’ of a prior design and does not create an overall impression on the informed user different from that produced by such a prior design.

V.Conclusion

57.In the light of all of the foregoing considerations, I propose that the Court answer the questions referred for a preliminary ruling by the Juzgado de lo Mercantil n° 1 de Alicante (Commercial Court No 1, Alicante, Spain) as follows:

(1)Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs

must be interpreted as meaning that, for a design to be protected as a Community design, it is not necessary for a ‘genuine design activity’ to be involved or for the design to be the result of the ‘intellectual effort’ of the designer. Nor must the person or entity having developed the design have engaged in such ‘genuine design activity’ or ‘intellectual effort’ to be regarded as the ‘designer’.

(2)Article 6 of Regulation No 6/2002

must be interpreted as meaning that, unlike constraints linked to the technical function of the product or the statutory requirements applicable to it, fashion trends cannot be regarded as restricting the designer’s freedom in such a way that minor differences between one or more prior designs and the design at issue are sufficient for the latter to produce a different overall impression from the former on the informed user and, thus, have ‘individual character’, within the meaning of that provision. Consequently, a design that differs from a prior design only in immaterial details influenced by fashion trends may lack an ‘individual character’, within the meaning of that provision, and may not be eligible for protection as a Community design.

—

1Original language: English.

2From the song ‘These boots are made for walkin’’ by Nancy Sinatra (released in 1966).

3Council Regulation of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

4See, to that effect, judgment of 21 November 2013, El Hogar Perfecto del Siglo XXI v OHIM – Wenf International Advisers (Corkscrew) (T‑337/12, EU:T:2013:601, paragraph 32). See, also, judgment of 6 September 2023, Cayago Tec v EUIPO – iAqua (Shenzhen) (Personal watercraft, Speedboat) (T‑377/22, EU:T:2023:504, paragraph 46 and the case-law cited).

5Pursuant to Article 1(2) of Regulation No 6/2002, a design shall be protected by an ‘unregistered Community design’ if made available to the public in the manner provided for in that regulation, and by a ‘registered Community design’ if registered in the manner provided for in that regulation. The main proceedings in the present case concern both registered and unregistered Community designs.

6See Article 24(1) and (3) of Regulation No 6/2002, which provides, in essence, that a registered or unregistered Community design may be declared invalid by a Community design court on the basis of a counterclaim in infringement proceedings. Article 26 of that regulation details the ‘consequences of invalidity’; in particular, paragraph 1 thereof states that ‘a Community design shall be deemed not to have had, as from the outset, the effects specified in this Regulation, to the extent that is has been declared invalid.’

7See Article 7(1) of Regulation No 6/2002 for an explanation as to when a design is to be deemed to have been made available to the public.

8See Article 5(1) of Regulation No 6/2002.

9See Article 6 of Regulation No 6/2002.

10Directive of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10).

11See judgment of 12 September 2019, Cofemel (C‑683/17, EU:C:2019:721, paragraph 30 and the case-law cited). Emphasis added.

12See judgment of 16 July 2009, Infopaq International (C‑5/08, EU:C:2009:465, paragraph 39). Emphasis added.

13See judgment of 12 September 2019, Cofemel (C‑683/17, EU:C:2019:721, paragraph 40).

14Ibid., paragraph 50. The Court added, in the same paragraph, that ‘protection [under Regulation No 6/2002] is to apply for a limited … but sufficient time to ensure a return on the investment necessary for the creation and production of that subject matter, without thereby excessively restricting competition.’

15Emphasis added.

16Emphasis added.

17See footnote 4.

18Indeed, as I have already pointed out in point 22 above, the Court has ruled that the concept of ‘work’ in Directive 2001/29 implies the existence of an original subject matter, which will be considered as the author’s own intellectual creation if it reflects the personality of its author as an expression of his or her free and creative choices.

19See judgment of 8 May 2024, Puma v EUIPO – Road Star Group (Footwear) (T‑757/22, EU:T:2024:291, paragraph 57 and the case-law cited).

20See footnote 4.

21See judgment of 6 September 2023, Cayago Tec v EUIPO – iAqua (Shenzhen) (Personal watercraft, Speedboat) (T‑377/22, EU:T:2023:504, paragraph 47 and the case-law cited).

22Ibid., paragraph 48 and the case-law cited. See, also, Opinion of Advocate General Szpunar in LEGO (Concept of informed user of a design) (C‑211/24, EU:C:2025:153, point 36).

23See judgment of 6 September 2023, Cayago Tec v EUIPO – iAqua (Shenzhen) (Personal watercraft, Speedboat) (T‑377/22, EU:T:2023:504, paragraph 48 and the case-law cited).

24For other examples, see Hartwig, H., ‘The concept of aesthetic creative freedom in design, copyright, and trademark law – a European perspective’, in Design Law, Edward Elgar Publishing, Cheltenham, UK, 2024, p. 562: ‘in [the] case of bicycle baskets, the designer’s creative freedom is limited by technical specifications only to the extent that the baskets must be fastened to the bicycle and be able to hold objects without them falling out while cycling. However, the designer can choose between a wide variety of colours, materials (e.g., plastic, metal, rattan, or fabric) and shapes (round, oval or square) of the basket.’

25See Article 6(1) of that regulation.

26See judgment of 20 October 2011, PepsiCo v Grupo Promer Mon Graphic (C‑281/10 P, EU:C:2011:679, paragraph 59).

27See judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172, paragraph 30).

28Judgment of 22 June 2010 (T‑153/08, EU:T:2010:248, paragraph 58).

29See judgment of 13 November 2012, Antrax It v OHIM – THC (Radiators for heating) (T‑83/11 and T‑84/11, EU:T:2012:592, paragraph 95).

30See, in that regard, Wennersten, U. et al., ‘Fashion and design law’, in Design Law, Edward Elgar Publishing, Cheltenham, UK, 2024, p. 586.

31Ibid., p. 589. As those authors explain, ‘the Community Design registration in the EU has some unique characteristics … [in particular, because] there is no opposition period. This makes the registration process relatively quick, with approvals even possible on the same day.’ See, also, p. 594: ‘in this era of the fast fashion industry, where trends are changing rapidly, obtaining unregistered design protection [as Regulation No 6/200 permits] is beneficial to the industry’.

32See Jones, D., ‘Please, Can We Stop Mary Jane-ifying Everything?’, British Vogue, 11 February 2025, available at: https://www.vogue.co.uk/article/mary-jane-shoe-trend.

33See judgment of 6 June 2019, Porsche v EUIPO – Autec (Motor vehicles) (T‑209/18, EU:T:2019:377, paragraphs 57, 59 and 61).

34See judgment of 19 June 2014, Karen Millen Fashions (C‑345/13, EU:C:2014:2013, paragraphs 26 and 33).