Deity Shoes, S.L. v Mundorama Confort, S.L. and Stay Design, S.L. is a case that will be relatable to many in the fashion industry.

All three parties determined their shoe designs based on catalogues from Chinese suppliers, who allowed for customisation (according to predetermined lists) of the various components of the shoe, such as the colour, material, and placement of buckles, laces and other decorative elements.

On 10th December 2021, Deity Shoes brought an infringement action in the Alicante Courts based on registered and unregistered Community design rights for various models of shoes. In turn, Mundorama Confort and Stay Design filed a counterclaim to declare the registered community designs invalid, based on a lack of novelty and individual character. 

The Spanish court then referred the matter to the CJEU, seeking clarification as to whether such ‘designs’ – whose visual characteristics are largely predetermined by suppliers’ catalogues, are still inherently protectable, or whether design protection requires a minimum degree of originality, that is to say, an “intellectual effort”, akin to copyright.

The court also sought clarification on whether fashion trends restrict the designer’s freedom so that minor differences are sufficient to produce a different overall impression on the informed user, and whether features resulting from fashion trends carry less weight in the overall impression on the informed user.

No creative threshold… no surprise

In a sector such as fast-fashion, where price and volume are crucial, compiling predetermined elements into something novel (at least in part!) is the norm. Designers are typically constrained by the scope of the options available offered by their suppliers and the drive to maintain a low price point for the end product – a product which may also only be available for a limited amount of time. 

The CJEU confirmed in its decision that the underlying process is not relevant as there is no minimum creativity threshold in EU design law. Unlike copyright, which requires a demonstration of intellectual effort and/or artistic skill, the only prerequisites for design protection are novelty and individual character. 

There is therefore also no creativity requirement for a person to be considered the designer of a product.

Where copyright seeks to protect works that reflect an author’s free and creative choices, design rights are meant to protect subject matter which, while being new and distinctive, is functional and liable to be mass-produced. This principle, articulated in Cofemel (C-683/17), was expressly reiterated by the CJEU in the present judgment.

Fashion trends do not stifle innovation

That does not mean that any combination of pre-existing components necessarily triggers design right protection. 

The resulting design must be new and have individual character. The CJEU clarified that fashion trends do not reduce the threshold for individual character as, in contrast to technical or regulatory constraints, the designer’s freedom is not permanently or inevitably limited. Therefore, minor differences cannot be sufficient to produce a different overall impression on the informed user. 

Equally, the CJEU held that features of a design resulting from fashion trends are not likely to be of lesser importance in the overall impression they produce on an informed user – described by the court as “a particularly observant” person with “extensive knowledge of the sector” who shows “ a relatively high degree of attention” – and that the informed user would not be considered less attentive merely because differences between designs are based on fashion trends. 

This means that trend-derived elements cannot simply be discounted when assessing individual character which is a point of considerable practical significance for both claimants and defendants in fashion design disputes.

Well-worn territory for design rights

The decision by the CJEU in Deity Shoes aligns with established case law. As the Court reiterated (citing Cofemel), “the protection of designs, on the one hand, and copyright protection, on the other, pursue fundamentally different objectives and are subject to distinct rules”. There is no legal basis for a creativity requirement.

Fashion trends do not lower (or raise) the bar for individual character as the designer’s ability to innovate is not restricted by them.

A designer chooses to follow a certain trend and the fashion industry must be aware that this may lead to a narrower scope of protection, or even no (valid) protection at all. While a designer does not have to be creative, investing in genuine novelty can broaden the scope of protection available. 

But copyright can still rub

Whilst the Deity Shoes decision reiterates the different purpose of design rights and copyright, both types of rights may coexist as the recent  Mio/Konektra (CJEU C‑580/23 and C‑795/23) decision clarified that there is “no relationship of rule and exception”. No doubt, we will see more decisions at the crossroads of design and copyright.

Key takeaways

• EU design rights do not depend on creativity or originality beyond novelty and individual character, and protection can extend even to designs assembled from standard components in supplier catalogues, provided that novelty and individual character in the design can still be demonstrated.
• Whilst creativity is not expressly required, investing in genuine design differentiation increases the likelihood of clearing the novelty / individual character thresholds, and can therefore broaden the scope of protection available. 
• Unlike technical or regulatory constraints, fashion trends are neither inevitable nor permanent and therefore do not expand the designer's ability to claim protection on the basis of minor differences. Features resulting from fashion trends carry their full weight in the overall impression on the informed user; a defendant cannot argue they should be disregarded.