Brompton puts the brakes on copycats, but it’s not over yet

With commuters reluctant to use public transport in the current coronavirus crisis, bicycles, especially folding ones, are likely to be a growth market. The sleek (and, some would say, iconic) shape of the folding Brompton Bicycle is a familiar sight across the world’s major cities. In 1975, Andrew Ritchie built the first prototype in his bedroom workshop overlooking Brompton Oratory in South Kensington. 45 years on, the brand is going strong but the design of the bicycle has become the focus of an ongoing copyright dispute between Brompton and a rival manufacturer which is producing its own folding bicycle. A question at the heart of the dispute is whether a technical design can be protected by copyright. In its recent ruling on the case, the Court of Justice of the European Union (CJEU) confirmed that the answer is yes, but only where the design is original and reflects the personality of the creator.

In this briefing, we reflect on the implications of this ruling for creators in the luxury sector and discuss the importance of brand protection.

Brompton v Chedech/Get2Get: What happened in the case?

Brompton applied for a patent to protect its bicycle folding technique in 1979, the patent was granted and lasted for the maximum period of 20 years before expiring in 1999. After the patent expired, a Korean company called Get2Get began manufacturing the folding "Chedech Bicycle" which has a similar appearance and folding style to the Brompton. In an attempt to protect its intellectual property, Brompton brought a claim in the Belgian court against the rival manufacturer for breach of copyright. In its defence, Get2Get argued that the appearance of the Chedech Bicycle was solely dictated by the technical solution sought, and that the folding technique previously covered by Brompton’s expired patent is the most functional method available. Brompton countered by pointing to other folding bicycles on the market which have a different appearance to the Brompton Bicycle and said that those demonstrated the existence of creative choice and originality in Brompton’s design.

The Belgian court referred the matter to the CJEU whose Advocate General gave an opinion in February which concluded that there could be no copyright protection where a design is exclusively dictated by the product’s technical function. In a somewhat unexpected outcome, the CJEU agreed in principle with the Advocate General’s opinion on designs that are exclusively technical but made a notable departure from that opinion by ruling that technical designs can benefit from copyright protection where creative freedom is displayed. The case will now return to the Belgian court for a judgment on whether the Brompton Bicycle design demonstrates the creative freedom required for copyright protection, so watch this space.

What does this mean for creators of luxury technical designs?

Creators of technical designs in the luxury sector typically pride themselves on the originality, creativity and individual personality that informs their approach to design. The CJEU ruling in Brompton’s case is potentially significant for many such creators, as it confirms that the prevalence of creativity in their designs may afford them copyright protection. However, it’s important to reiterate that the Brompton case is not yet over. It will be for the Belgian court to decide whether the design of the bicycle displays creativity and originality. Other recent cases have shown that the outcome of court rulings on copyright can be difficult to predict.

A wholistic approach to brand protection

For luxury businesses, having a strong brand and loyal customer base plays a crucial role in consistently maintaining a share of the market. Regardless of the outcome in this case, Brompton can no doubt rely on its strong brand to maintain its market share. Investing in brand protection is the most effective way to protect your intellectual property (which is likely to be your most valuable asset), and to sustain the strength of your brand in the long term. The CJEU’s decision should provide comfort to creators such as Brompton. However, the differing views of the CJEU and its Attorney General highlight the uncertainty of copyright protection and the importance of taking a wholistic approach to brand protection. This means defending your brand online and on the high street with appropriate trade mark registrations, good management and monitoring of your IP portfolio, exploitation through licensing and franchising and, where necessary enforcement of your IP rights.

If you require further information about anything covered in this briefing, please contact William Charrington, or your usual contact at the firm on +44 (0)20 3375 7000.

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Farrer & Co LLP, June 2020