There is a grey area of protection for works of applied art, either by copyright or by design, both intellectual property rights which have different criteria of protection.
One of the main differences is that with Copyright, a work does not require registration to be protected, whereas the design must be registered to ensure its protection. Copyright protects the intellectual work (artistic or literary), which is the fruit of creative work originating from the human intellect and externalised to the world. Design protection encompasses the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, pattern, texture and/or materials of the product itself and/or its ornamentation.
Despite novelty and individual character being requirements for the protection of design, both in European Union and Chinese legislations, the IP Offices of these jurisdictions do not analyse these requirements to grant the protection, which will only be analysed in case of invalidity proceedings after granting the designs.
Due to the overlapping of these IP rights which a particular work or product may receive, a work may even be a ground of invalidity of a Community design, which has been registered infringing this copyrighted work.
Invalidity of a design based on copyright infringement
The Article 25 (1)(f) of Community Design Regulation (EC) No 6/2002 regulates this matter and the application for a declaration of invalidity of a Community design must fulfil the following requirements:
Applicant must be the holder of the earlier copyrighted work;
Evidence proving that the applicant is the holder of the earlier copyrighted work (article 28(1)(b)(iii) Community Design Implementing Regulation) – this work has been used or disclosed, as the case may be, under the applicant’s name before the date of filing or the priority date of the Community design;
Representation and particulars identifying the work protected by copyright;
Provisions of the national law which protects the copyrighted work invoked by the applicant, including, if necessary, court decisions and/or academic writings;
Particulars establishing the content of the national law of which the applicant is seeking application including, where necessary, court decisions and/or academic writings;
Particulars showing that the applicant satisfies the necessary conditions, in accordance with that law, to have the Community design invalidated or its use prohibited by virtue of its earlier copyright.
Bringing these elements together, the Invalidity Division of the European Union Intellectual Property Office (EUIPO) will analyse whether the applicant for a declaration of invalidity is the holder of the copyright invoked and whether unauthorised use of a work protected by the copyright legislation of a Member State, as interpreted by the courts of that Member State, has occurred. If both circumstances are confirmed, the Invalidity Division shall declare the Community design invalid.
The application for a declaration of invalidity of a Community design based on copyright infringement does not apply to cases in which ownership of the Community design is contested, in particular when the invalidity applicant’s essential argument is that the Community design was created not by the registered holder but by the invalidity applicant or by its employee.
It should be noted that Article 14(2) CDR states that where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the Community design shall vest in the employer, unless otherwise agreed or specified under national law. In this sense, the EUIPO has no jurisdiction to determine which of the parties is the rightful owner of the contested Community design since such jurisdiction lies with national courts.
In China, a design patent can also be invalidated on the basis of copyright infringement, as the Chinese Patent Law stipulates in Article 23 that a patented design shall not conflict with the legal rights already acquired by others before the filing date, copyright being understood as a legal right according to Chinese Copyright Act. It should be noted that the Chinese system is moving towards harmonizing rights in line with other jurisdictions, namely the European Union, the United States of America, Japan, South Korea, and international treaties.
Product qualified as a work to be protected by copyright
Still on the overlap between copyright and design rights, it should be noted that, for the European Union jurisprudence, the aesthetic effect of a product does not in itself make it possible to determine whether that product constitutes an intellectual creation which reflects the freedom of choice and personality of its author and thus fulfils the originality/creativity requirement of copyright.
The Chinese jurisprudence, just a few years ago, required at least for a subject matter which an alternative protection instrument existed, such as design protection if an object of applied art was disputed, to express an especially high degree of creativity that distinguished such works from the subject matter protected under these alternative instruments (for example, patent design).
However, this extraordinarily high degree of originality has been softened, specially by the third amendment to the Copyright Act, in 2020, which modified the Article 3 stating that any “intellectual achievement” can henceforth be protected as work, a much broader term than the previous “creation”, in that it is clearer now that anything that requires intellectual labour can be protected without having to meet certain levels of artistry. Under this much broader definition, more creations will be subsumable under “protected works” and alleged infringers will find it harder to deny the work character, which causes, in a way, the curtailment of access to culture and freedom of creation.
In China, the legislation adheres to the traditional system of droit d'auteur in that it is centred on the author of the work, although it has some approximations to the Copyright tradition, so it ends up being a hybrid system.
Regarding the copyright protection under the traditional system of droit d'auteur and based on the understanding established for more than a decade in European jurisprudence, it should be stressed that the legal protection of the work by copyright arises from compliance with the requirements of creation of the human intellect, creativity and externalisation, and it is relevant to mention the decision of June 11th of 2020, in the Brompton Bicycle case, judged by the Fifth Chamber of the Court of Justice of the European Union (CJEU).
This decision confirmed that the copyright protection applies to a product (folding bicycle) “whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality, which it is for the national court to verify, bearing in mind all the relevant aspects of the dispute in the main proceedings”.
In this sense, an object which satisfies the requirement of originality may benefit from the protection afforded by copyright, even if its realisation has been determined by technical considerations, provided that that determination has not prevented the author from reflecting his personality in that object by making free and creative choices.
As for intellectual property in general, it is concluded that, despite some differences, the Chinese system is moving towards the harmonisation of rights in line with the European Union and, in the case of designs, even with the United States of America, Japan, South Korea, and international treaties.
In the European Union-China context, stands out the initiative “IP Key China”, directed by the European Commission and implemented by the European Union Intellectual Property Office (EUIPO), where various issues involving intellectual property in these jurisdictions can be consulted.
 COURT OF JUSTICE OF THE EUROPEAN UNION (Third Chamber), Cofemel – Sociedade de Vestuário, S.A. v G‑Star Raw CV, Case C‑683/17, 12.9.2019, EU:C:2019:721, paragraphs 50 and 54.
 As an example, mention is made of the decision of Sichuan Higher People´s Court in its decision 176 Chuan Zhi Min Zhong (2019) of 29 November 2019 with regard to works of applied art, stating that only subject matter that expressed an extraordinarily high degree of originality shall be protected as applied art, whereas the creators of all other subject matter shall rather apply for design protection.
 COURT OF JUSTICE OF THE EUROPEAN UNION (Fifth Chamber), SI and Brompton Bicycle Ltd v Chedech/Get2Get, Case C‑833/18, 11.6.2020, EU:C:2020:461.
 COURT OF JUSTICE OF THE EUROPEAN UNION (Fifth Chamber), SI and Brompton Bicycle Ltd v Chedech/Get2Get, Case C‑833/18, 11.6.2020, EU:C:2020:461, paragraph 38.
 COURT OF JUSTICE OF THE EUROPEAN UNION (Fifth Chamber), SI and Brompton Bicycle Ltd v Chedech/Get2Get, Case C‑833/18, 11.6.2020, EU:C:2020:461, paragraph 26.
 Particularly in relation to the European Union and copyright, it is recommended to read the study of Peter Ganea, entitled “STUDY ON RESEARCH AND COMPILATION OF LEGISLATION ON COPYRIGHT PROTECTION IN CHINA”. Available on: https://ipkey.eu/sites/default/files/ipkey-docs/2022/IPKEY-
 Available on: https://ipkey.eu/en/china
This article was originally published in IPR Daily.