Case C-168/09

Flos SpA

v

Semeraro Casa e Famiglia SpA

(Reference for a preliminary ruling from the Tribunale di Milano)

(Industrial and commercial property – Directive 98/71/EC – Legal protection of designs – Article 17 – Obligation concerning the cumulation of design protection with copyright protection – National law precluding copyright protection or rendering it unenforceable for a certain period in the case of designs which entered the public domain before the entry into force of the law – Principle of the protection of legitimate expectations)

Summary of the Judgment

1.        Approximation of laws – Designs – Directive 98/71 – Principle of cumulation of design protection with copyright protection

(European Parliament and Council Directive 98/71, Art. 17; Council Directive 93/98, Art. 1(1) and 10(2))

2.        Approximation of laws – Designs – Directive 98/71 – Principle of cumulation of design protection with copyright protection

(European Parliament and Council Directive 98/71, Art. 17)

1.        Article 17 of Directive 98/71 on the legal protection of designs must be interpreted as precluding legislation of a Member State which excludes from copyright protection in that Member State designs which were protected by a design right registered in or in respect of a Member State and which entered the public domain before the date of entry into force of that legislation, although they meet all the requirements to be eligible for copyright protection.

It is clear from the wording of Article 17 of Directive 98/71, and particularly from the use of the word ‘also’ in the first sentence thereof, that copyright protection must be conferred on all designs protected by a design right registered in or in respect of the Member State concerned.

The intention of the European Union legislature to confer that protection also emerges clearly from recital 8 in the preamble to Directive 98/71, affirming, in the absence of harmonisation of copyright legislation, the principle of cumulation of protection under specific registered design protection law and under copyright law.

Nor does the fact that the Member States are entitled to determine the extent of copyright protection and the conditions under which it is conferred affect the term of that protection, since the term has already been harmonised at European Union level by Directive 93/98 harmonising the term of protection of copyright and certain related rights.

In that regard, Article 1(1) of Directive 93/98 provides for copyright in a literary or artistic work within the meaning of Article 2 of the Berne Convention for the Protection of Literary and Artistic Works to run for the life of the author and for 70 years after his death. Article 10(2) of Directive 93/98 provides that that term of protection is to apply to all works and subject matter which, on 1 July 1995, were protected in at least one Member State.

It follows that, under Article 17 of Directive 98/71, designs which were protected by a design right in or in respect of a Member State and which met the conditions under which copyright protection is conferred by the Member States, in particular the condition relating to the level of originality, and in respect of which the term laid down in Article 1(1) of Directive 93/98, in conjunction with Article 10(2) thereof, had not yet expired, were to be eligible for copyright protection in that Member State.

In that regard, it is clear from Article 10(2) of Directive 93/98 that application of the terms of protection laid down by the directive may have the effect, in the Member States which had a shorter term of protection under their legislation, of protecting afresh works or subject matter which had entered the public domain. That consequence results from the express will of the European Union legislature and such a solution was intended to achieve as rapidly as possible the objective – formulated, in particular, in recital 2 in the preamble to Directive 93/98 – of harmonising the national laws on the terms of protection of copyright and related rights and to avoid the situation where rights have expired in some Member States but are protected in others.

That reasoning must also hold true in relation to the revival of copyright protection for designs which were previously protected by another intellectual property right.

(see paras 37-44, operative part 1)

2.        Article 17 of Directive 98/71 on the legal protection of designs must be interpreted as precluding legislation of a Member State which – either for a substantial period of 10 years or completely – excludes from copyright protection designs which, although they meet all the requirements to be eligible for copyright protection, entered the public domain before the date of entry into force of that legislation, that being the case with regard to any third party who has manufactured or marketed products based on such designs in that State – irrespective of the date on which those acts were performed.

As regards, in the first place, a legislative measure providing for a transitional period in relation to a specific category of third parties with a view to protecting their legitimate interests, it follows from the principle that acquired rights must be respected and from the principle of the protection of legitimate expectations that Article 17 of Directive 98/71 does not preclude such a measure, provided that the measure does not have the effect of deferring for a substantial period the application of the new rules on copyright protection for designs so as to prevent them from applying on the date laid down by that directive.

In that regard, the assessment of the compatibility of the length of that transitional period and of the category of third parties covered by the legislative measure must be carried out in the light of the principle of proportionality.

Accordingly, the legislative measure adopted by a Member State must be appropriate for attaining the objective pursued by the national law and necessary for that purpose – namely ensuring that a balance is struck between, on the one hand, the acquired rights and legitimate expectations of the third parties concerned and, on the other, the interests of the rightholders. Care must also be taken to make sure that the measure does not go beyond what is needed to ensure that that balance is struck.

For that purpose, the measure may be regarded as appropriate only if it is directed at a category of third parties entitled to rely on the principle of protection of legitimate expectations – that is to say, persons who have already performed acts of exploitation in relation to designs within the public domain at the date of entry into force of the legislation transposing Article 17 of Directive 98/71 into the domestic law of the Member State concerned.

Furthermore, a legislative measure of that kind should ensure that the period of use of the designs by those third parties is limited to what is necessary for them to phase out the part of their business that is based on earlier use of those designs or to clear their stock. The measure does not go beyond what is necessary to ensure that a balance is struck between the competing rights if it does not defer entitlement to copyright protection for a substantial period.

As regards, in the second place, a legislative measure abolishing the moratorium and rendering copyright protection unenforceable for an indefinite period in the case of products manufactured on the basis of designs which were in the public domain before the entry into force of the national legislation transposing Directive 98/71, it follows from the foregoing that such a measure negates Article 17 of Directive 98/71, since it has the effect of preventing, generally, the application of the new protection, that is to say, protection relating to copyright. Nor does that measure seek to restrict the category of third parties who may rely on the principle of the protection of legitimate expectations. On the contrary, the measure renders copyright more generally unenforceable, since, under the provision, it is not necessary for a third party to have begun exploiting the designs before the entry into force of the national legislation transposing Directive 98/71.

(see paras 55-60, 64-65, operative part 2)