When a company owns the Benelux rights in the design of a chair but then it fails to maintain the registration of its Benelux rights under Benelux law, can a rival company still be stopped from making similar chairs because of the links between the old Benelux law and current EU law? More specifically, what is the relationship between Benelux rights and the EU’s ‘term of protection’ Directive 93/98/EEC?
Mr van den Berg designed a chair. The design was called ‘Charly’. Originally in the form of an armchair, Mr van den Berg subsequently then made a smaller version of ‘Charly’ just for dining rooms – he branded this one ‘Chaplin’.
Mr van den Berg duly protected his design(s) under the Uniform Benelux Law on Designs and Models. The registration indicated that he was the designer. It also indicated that a furniture company known as Montis Design held the right to make the chair(s). In 1990, Mr van den Berg transferred his rights to Montis Design.
However, to maintain the rights acquired under the Uniform Benelux Law on Designs and Models, Mr van den Berg’s initial registration needed to be revalidated by means of a ‘maintenance declaration’. This declaration had to be made within a period of five years. This was not done and the rights lapsed in 1993.
Other companies began producing look-alike-chairs. This caused Montis Design to claim that their Benelux rights (design and copyright) were being infringed. The claim however rang hollow for the rival companies, which pointed out that without the Benelux ‘maintenance declaration’ there could be no registered rights to infringe.
Litigation broke out in the Dutch courts. In respect of the formality to submit a Benelux maintenance declaration, the Dutch Supreme Court held that the Benelux formality in respect of copyright protection under the Uniform Benelux Law on Designs and Models was contrary to Article 5(2) of the Berne Convention. The Dutch Supreme Court’s judgment was handed down in 2000.
Despite the formality requirement having been quashed by the Dutch Supreme Court, Montis Design could not benefit from this development in Benelux Law. In 2009, the Dutch Supreme Court handed down yet another judgment involving Montis Design and it held that the company could not rely on Article 5(2) of the Berne Convention because the chairs at the centre of the litigation originated in Holland, and both of the litigating parties had conducted their litigation on that basis.
Another bout of litigation ensued. In 2013, the Dutch Supreme Court decided to make a preliminary reference to the Benelux Gerechtshof about the interpretation of the Uniform Benelux Law on Designs and Models.
At the Benelux Gerechtshof
Montis Design relied on yet more legislation to support their claim that their rights still existed despite the lapse of the Benelux registration.
In that context, they pointed out that there was a Protocol to the Uniform Benelux Law on Designs and Models, plus there was Article 10(2) and Article 13(1), of the EU’s ‘term of protection’ Directive 93/98/EEC, which, when read together, meant that their rights were still valid.
That is to say, the first piece of relevant EU legislation was Council Directive 93/98/EEC harmonizing the term of protection of copyright and certain related rights OJ  L290/9 now Directive 2006/116/EC on the terms of protection of copyright and certain related rights (codified version) (OJ  L372/12).
The relevant provisions provide:
Application in time
2. The terms of protection provided for in this Directive shall apply to all works and subject matter which are protected in at least one Member State, on the date referred to in Article 13 (1), pursuant to national provisions on copyright or related rights or which meet the criteria for protection under Directive 92/100/EEC. ….
1. Member States shall bring into force the laws, regulations and administrative provisions necessary to comply with Articles 1 to 11 of this Directive before 1 July 1995.
When Member States adopt these provisions, they shall contain a reference to this Directive or shall be accompanied by such reference at the time of their official publication. The methods of making such a reference shall be laid down by the Member States.
Member States shall communicate to the Commission the texts of the provisions of national law which they adopt in the field governed by this Directive.
2. Member States shall apply Article 12 from the date of notification of this Directive.
The second piece of relevant legislation was the EU’s ‘designs’ Directive 98/71/EC (OJ  L289/28). Articles 17 entitled ‘Relationship to copyright’ provides:
A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State
The Benelux court hearing the Montis Design case noted that Article 17 of the EU’s designs Directive and the cumulation of design protection with copyright protection had already been interpreted by the CJEU in Flos (Case C-168/09). The scenario in that case was that Italian law precluded copyright protection (or rendered it unenforceable) for a certain period in the case of designs which entered the public domain before the entry into force of the law.
The CJEU in Flos had reasoned:
35 As regards the second case (that of designs which have entered the public domain because the protection resulting from registration has ceased to have effect), although the first sentence of Article 17 of Directive 98/71 provides that a design protected by a design right registered in or in respect of a Member State is also eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form, the second sentence of Article 17 allows the Member States to determine the extent to which, and the conditions under which, such a protection is conferred, including the level of originality required.
36 However, the second sentence cannot be interpreted as meaning that Member States have a choice as to whether or not to confer copyright protection for a design protected by a design right registered in or in respect of a Member State if the design meets the conditions under which copyright protection is conferred.
On those grounds, the Second Chamber had gone on to rule in Flos:
1. Article 17 of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 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.
With Flos in mind, the Benelux court also noted that there was another judgment from the CJEU which seemed relevant as it concerned Article 10 of the first-mentioned piece of legislation, the EU’s ‘term of protection’ Directive.
The case was Case C-60/98, Butterfly Music ECLI:EU:C:1999:333. The issue in that case was the harmonisation of the term of protection and the revival of rights which had expired prior to the Directive being implemented.
The CJEU in Butterfly Music had reasoned:
18 As the national court has observed, it is clear from Article 10(2) of the Directive 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.
19 This consequence results from the express will of the Community legislature. While the Commission’s original proposal for the Directive provided that its provisions would apply `to rights which have not expired on or before 31 December 1994′, the European Parliament amended that proposal by introducing new wording which was, in essence, taken up in the final version of the Directive.
20 That solution was adopted in order to achieve as rapidly as possible the objective, formulated, in particular, in the second recital in the preamble to the Directive, of harmonising the national laws governing 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.
21 However, Article 10(3) makes it clear that the Directive is without prejudice to any acts of exploitation performed before the date laid down for its implementation, that is to say 1 July 1995 at the latest, and that the Member States are to lay down the necessary provisions to protect in particular acquired rights of third parties.
From this, the Benelux court noted that EU law did seem to permit the revival of lapsed copyright where it contributed to the harmonisation of national legislation.
However, the Benelux court also noted that the CJEU’s reasoning did not seem to cover the present situation. Namely, here was a situation where national legislation meant that the copyright in the industrial work had lapsed before 1 December 2003 not because of the term of protection coming to an end but rather by dint of the fact that a formal requirement for registration had not been met.
Hence, the 9 judges at the Benelux Court were troubled by two aspects of the case. The first was that they wondered whether the EU’s term of protection Directive still applied to the copyright which subsisted at the time of 1 July 1995? Furthermore, if copyright was revived in the present situation, then a second issue arose: when was the material time? The Benelux judges decided to make a preliminary reference to the CJEU.
According to the Curia website, the Benelux Court has asked:
1. Is the term of protection referred to in Article 10, in conjunction with Article 13(1), of Directive 93/98/EEC (the Term of Protection Directive) […] applicable to rights of copyright that were originally protected by national copyright law but which lapsed before 1 July 1995 on the ground that a formal condition had not been satisfied (in due time), more specifically because a maintenance declaration, as referred to in Article 21(3) of the Uniform Benelux Law on Designs and Models (old version), had not been filed (in due time)?
2. If the answer to Question 1 is in the affirmative:
Must the Term of Protection Directive be construed as precluding a rule of national legislation under which the copyright in a work of applied art that lapsed before 1 July 1995 on the ground that a formal condition had not been satisfied is deemed to have lapsed permanently?
If the answer to Question 2 is in the affirmative:
3. If, under national legislation, the copyright in question is to be considered to revive or to be revived at a certain time, from what date does such revival occur?
The CJEU heard the Montis Designs case on 10 March 2016. A similar case is pending before the Dutch Supreme Court but the Dutch Supreme Court is going to wait for the CJEU’s judgment.
Whereas the case of Montis Design turns on the relationship between Benelux models and designs law and various planks of EU legislation, the relationship between the Benelux trade mark Convention and the EU’s own trade mark Directives has just been made the object of a fresh reference to the CJEU. The case involves Christian Louboutin. The preliminary reference has yet to be docketed by the CJEU but because the case is potentially of great interest to trade mark lawyers here is my summary.
Update – 22 March 2016
The CJEU has now docketed the Louboutin reference and my summary of the reference has now been moved.
Update – 3 May 2016
The Opinion of Advocate General Campos Sánchez-Bordona is due to be handed to the Third Chamber on 31 May 2016.
Update – 9 October 2016
The judgment of the Third Chamber is due on 20 October 2016.