On December 1 2015 an act introducing amendments to the Industrial Property Law came into force. Among other amendments, this act abrogated the restriction on cumulative protection of industrial designs by repealing Article 116 of the Industrial Property Law. This provision stated that the protection of economic rights in a work provided for in the copyright provisions did not apply to products manufactured in accordance with an industrial design and placed on the market after the expiry of the industrial design registration right. Consequently, under Polish law industrial designs with expired registration rights were excluded from copyright protection.

Under Article 17 of the EU Designs Directive (98/71/EC), a design protected by a design right must also be eligible for copyright protection. However, Article 17 also states that member states may determine the extent to which, and the conditions under which, such protection is conferred. Therefore, it was generally accepted in Poland that Article 116 of the Industrial Property Law was in line with the directive since the authorisation to determine the extent of copyright protection allowed a member state to limit copyright protection to the duration of the registration right. However, this approach was rejected by the European Court of Justice (ECJ) decision in Flos SpA v Semeraro Casa e Famiglia SpA (C-168/09, January 27 2011).

In its decision the ECJ stated that Article 17 of the Designs Directive cannot be interpreted as meaning that member states can choose whether 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. Consequently, the fact that member states can determine the extent of copyright protection and the conditions under which it is conferred does not affect the term of that protection since the term has already been harmonised at the EU level by the EU Copyright and Neighbouring Rights Directive (93/98/EC) and lasts for 70 years after the author’s death. Therefore, the ECJ declared that under Article 17 of the Designs Directive, designs protected by a design right in or in respect of a member state and which meet the conditions under which copyright protection is conferred by member states – in particular, the condition relating to the level of originality – and in respect of which the copyright protection term has not yet expired, are eligible for copyright protection in that member state.

This decision demonstrates that the Designs Directive does not allow member states to maintain provisions which exclude copyright protection for industrial designs which have expired registration rights if the designs meet the conditions under which copyright protection was conferred, and thus Article 116 of the Industrial Property Law did not comply with the directive.

Consequently, in accordance with EU law and ECJ case law, the Polish legislature decided to repeal Article 116  and to allow full, cumulative protection of industrial designs. Since December 1 2015 even products manufactured in accordance with an industrial design and placed on the market after the expiry of a registration right are subject to copyright protection if they meet the conditions under which copyright protection was conferred.

Piotr Stradomski

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