Opinion of the Advocate General — ECLI:EU:C:2020:79
Date: 2020-02-06
Language of the case: French
Subject matter: Right of establishment;Intellectual, industrial and commercial property;Approximation of laws;Freedom to provide services;Copyright and related rights
Procedure: Reference for a preliminary ruling
Origin: Belgium

Translation   C-833/18 — 1 
Case C-833/18 
Request for a preliminary ruling 
Date lodged: 
31 December 2018 
Referring court: 
Tribunal de l’entreprise de Liège (Belgium) 
Date of the decision to refer: 
18 December 2018 
Applicant: 
SI 
Brompton Bicycle Ltd 
Defendant: 
Chedech / Get2Get 
  
[...] 
The President of the Tribunal de l’entreprise de Liège 
(Companies Court, Liège, Belgium) 
 
[Or. 2] 
IN THE CASE: 
Mr SI, residing in London (United Kingdom) 
[...] 
Brompton Bicycle Ltd, a company incorporated under English law whose 
registered office is at ... Greenford, Middlesex UB6 0FD (United Kingdom) […] 
[...] 
EN 
REQUEST FOR A PRELIMINARY RULING OF 18. 12. 2018 — CASE C-833/18 
 
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applicants, 
[...] 
v 
Chedech / Get2Get, a company incorporated under Korean law whose registered 
office is in Bucheon-si (Republic of Korea) [...] 
defendant, 
[...] 
*** 
[...] [Procedural details] 
**** 
[Or. 3] 
1. The claims 
Mr SI and Brompton Bicycle Ltd (‘Brompton’) claim that the court should: 
– Rule that Chedech bicycles, irrespective of the distinctive signs affixed to 
the folding bicycles in question, infringe Brompton’s copyright and Mr SI’s non-
pecuniary rights in the Brompton bicycle; 
– Order the defendant to cease all activities which infringe the applicants’ 
copyright, including but not limited to the production, use, sale or offer for sale, 
distribution, import, export, promotion or exhibition of the Chedech bicycles at 
issue and any folding bicycle which exhibits the following original features of the 
Brompton bicycle: 
(i) In the unfolded position: 
– the shape of the main frame, as characterised by a curved main tube and a 
rear triangular section; and/or 
– the shape of the rear frame, as characterised by a slender, right-angled 
triangle curved at one of the lower corners and with a suspension component at 
the top corner; and/or 
– the appearance of the chain tensioner mechanism; and/or 
– the loose cables; 
(ii) In the stand-by position: 
BROMPTON BICYCLE 
 
3 
– the position of the triangular rear frame folded under the main frame and of 
the rear wheel which follows the curve of the main frame; and/or 
– the appearance of the folded chain tensioner which takes up the slack in the 
chain; 
(iii) In the folded position: 
– the appearance of the rear frame, in which the rear wheel is secured so that it 
touches the lower part of the curved main tube; and/or 
– the appearance of the front wheel, which is parallel to the main frame and 
rests on the ground; and/or 
– the handlebar, which folds downwards, away from the bicycle, 
in Belgian territory, including on any website accessible in Belgium and 
controlled by Get2Get or an affiliated company, in particular www.chedech.com, 
in accordance with the judgment to be delivered, within 10 days of service of the 
present judgment, on pain of a penalty payment of EUR 75 000 per day of non-
compliance with the foregoing, and per unlawful product sold; 
– Order the defendant to: 
(i) notify the judgment to be delivered to all sales outlets and do everything 
within its means to ensure that sales outlets cease all unlawful activities, including 
on all websites and in all sales outlets which are accessible in Belgium, in 
accordance with the present judgment; 
(ii) provide the applicants with an exhaustive list of all sales outlets; 
(iii) provide evidence that all of the foregoing has been done, upon first being 
requested to do so by the applicants; [Or. 4] 
all of the foregoing to be done within 10 days of service of the decision to be 
delivered, on pain of a penalty payment of EUR 50 000 per day of non-
compliance with the foregoing, and per sales outlet; 
– Order the defendant to: 
(i) recall all unlawful products from all sales outlets; 
(ii) destroy all unlawful products; 
(iii) provide appropriate evidence, such as a certificate of destruction, that all of 
the foregoing has been done, upon first being requested to do so by the applicants; 
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all of the foregoing to be done within 10 days of service of the judgment to be 
delivered, on pain of a penalty payment of EUR 50 000 per day of non-
compliance with the foregoing, and per sales outlet; 
– Order the defendant to publish the following text (or, where appropriate, a 
sworn translation) for a period of 30 days: 
‘By decision of [...], the President of the Tribunal de Commerce de Liège 
(Commercial Court, Liège) held that the Chedech folding bicycle, available inter 
alia at www.chedech.com, infringes Brompton Ltd’s copyright and the non-
pecuniary rights of Mr SI, the inventor of the Brompton folding bicycle. Get2Get 
has been ordered to cease sales, offers for sale, promotions or any other unlawful 
activities in Belgian territory, including on any website accessible in Belgium. To 
read the full decision, click here’ 
on all of the following websites and in all of the following magazines: 
(i) on the homepages/first pages of the following magazines, in both their 
online and print versions (if available in printed form), and in both the French and 
Dutch versions (or in the language available): 
• Grinta: https://wyvw.grinta.be 
• Cycling.be: http://www.sport.be/cycling 
• 02 Bikers: http://www.o2bikers.com/ 
• Tweewieler: http://www.tweewieler.nl/ 
• Fietsmarkt: http://www.fietsmarkt.com/ 
• Fiets: https://www.fiets.nl/ 
• Fiets Actief: http://www.fietsactief.nl/ 
• Bike & Trekking: http://www.bikeandtrekkingmagazine.nl/ 
(ii) on the homepages of its websites, in particular http://chedech.com 
(iii) on the homepages of the websites of its affiliate companies; it is ordered to 
do everything within its means to ensure that it is published there, 
on websites in Dutch, the publication will have to be in Dutch only; on websites in 
French, the publication will have to be in French only; on all other websites, the 
publication will have to be in English only; on websites using more than one of 
the abovementioned languages, the publication will have to be in all of those 
languages; 
BROMPTON BICYCLE 
 
5 
all of the foregoing to be done within 10 days of service of the present judgment 
to be delivered, on pain of a penalty payment of EUR 50 000 per day of non-
compliance with the foregoing, and per missing publication; 
– Order the defendant to pay the full costs, provisionally estimated at 
EUR 1 440. [Or. 5] 
The company incorporated under Korean law, Chedech (‘Get2Get’), contends that 
the claim is unfounded and that the applicants should be declared jointly and 
severally liable for the payment of a procedural cost indemnity of EUR 5 000. 
In the alternative, it contends that the court should: 
With regard to the principal cessation order, concerning the sale of ‘unlawful 
products’: 
– Declare that the various conditions describing the applicants’ exclusive 
rights are all cumulative (rather than alternative), but exclude those 
conditions which are too vague and those which concern technical 
matters; 
– In any event, limit the penalty payment to EUR 500 per day of delay, 
per sales outlet, in the event of failure to comply with the cessation 
order within two months of service of the judgment to be delivered; 
With regard to the publication order: 
– Limit the penalty payment to EUR 100 per day of delay with respect to 
publication on the website www.chedech.com, in the event of failure 
to comply with the cessation order within two months of service of the 
judgment to be delivered; 
With regard to the notification, recall and destruction orders: 
– Rule that no sales outlet has been found and dismiss the orders to 
notify distributors as well as the recall and destruction orders; 
In any event, in respect of all the orders sought: 
– Limit the total amount of the penalty payments that may be imposed in 
enforcement of the judgment to be delivered to EUR 25 000. 
2. Facts of the case 
(a) The parties 
In 1975, Mr SI created an initial design for a folding bicycle, which he named 
Brompton: 
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[Or. 6]  
In 1976, Mr SI founded Brompton Ltd with a view to developing the marketing of 
his folding bicycle by granting a licence to a larger undertaking to manufacture 
and market the bicycle. 
However, at that time, he was unable to find an undertaking that was interested 
and so continued to work alone. 
In 1981, he received his first order for 30 Brompton bicycles. He manufactured 
them to a design that was slightly different from his original bicycle: 
 
Following that first order, Mr SI sought to expand his company’s activities to 
increase market awareness of his folding bicycle design. 
Since 1987, the Brompton bicycle has been marketed in the following form: 
BROMPTON BICYCLE 
 
7 
 
 [Or. 7]  
From the outset, its feature has been that it can be folded into three positions: 
unfolded, stand-by and folded. 
[...] 
Brompton used to hold a patent for its bicycle’s folding mechanism, but this has 
now fallen into the public domain. [Or. 8]  
Brompton also holds the economic rights arising from the copyright in the 
appearance of the Brompton bicycle, while Mr SI holds the non-pecuniary rights 
in that bicycle. 
Get2Get is a South Korean company which specialises in the production of sports 
equipment. It produces and markets via its website (www.chedech.com), inter 
alia, a bicycle which also folds into three different positions: 
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Brompton considers that the Chedech bicycle, which is available for sale inter alia 
in Belgium, is almost identical in appearance to its own bicycle and that it 
infringes its copyright. [Or. 9]  
Brompton therefore carried out a comparison of the two bicycles in each of the 
three positions (folded, stand-by and unfolded): 
BROMPTON BICYCLE 
 
9 
 
It considers that these images adequately demonstrate that the two bicycles are 
almost identical in appearance in each of the three positions of use. 
In so far as Brompton and Mr SI submit that they have never given Get2Get 
permission to use their copyright to manufacture those bicycles, they decided to 
bring the present proceedings. [Or. 10]  
3. Issues 
(a) Jurisdiction ratione materiae and ratione loci 
Article XVII.14 § 3 of the Belgian Code de droit économique (Code of Economic 
Law) confers on the President of the Tribunal de l’entreprise (Companies Court) 
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jurisdiction to determine the existence of any copyright infringement and to order 
its cessation. 
The jurisdiction ratione loci of the Tribunal de l’entreprise (Companies Court) is 
based on Article 96(2) of the Belgian Code de droit international privé (Code of 
Private International Law) (CDIP), which confers jurisdiction in respect of actions 
relating to an obligation arising from a harmful event on the court of the place in 
which the damage occurred or is at risk of occurring. 
In the present case, the applicants submit that the bicycle marketed by Get2Get on 
its website www.chedech.com infringes their copyright in the Brompton bicycle. 
That website is accessible to potential purchasers inter alia in the territory of the 
judicial district of Liège. 
It is clear from the foregoing that this court has jurisdiction ratione materiae and 
ratione loci to hear and determine the present dispute, and this is recognised by 
each of the parties to the proceedings. 
(b) Conditions for the existence of copyright 
Under Article 2(1) of the Berne Convention for the Protection of Literary and 
Artistic Works: 
The term ‘literary and artistic works’ includes every production in the literary, 
scientific and artistic domain, whatever the mode or form of its expression, such 
as books, pamphlets and other writings; lectures, addresses, sermons and other 
works of the same nature; dramatic or dramatico-musical works; choreographic 
works and entertainments in dumb show, the acting form of which is fixed in 
writing or otherwise; musical compositions with or without words; 
cinematographic works and works produced by a process analogous to 
cinematography; works of drawing, painting, architecture, sculpture, engraving 
and lithography; photographic works and those obtained by a process analogous 
to photography; works of applied art; illustrations, geographical charts, plans, 
sketches and plastic works relative to geography, topography, architecture or 
science. 
Under Belgian law, the provisions applicable to copyright protection are set out in 
Book XI of the Code de droit économique (Code of Economic Law), in 
Article 164 et seq. Their purpose is, inter alia, to transpose into Belgian law a 
number of European directives, including Directive 2001/29/EC of the European 
Parliament and of the Council of 22 May 2001 on the harmonisation of certain 
aspects of copyright and related rights in the information society, which 
determines the various exclusive rights conferred on copyright holders. Article 
XI.165 transposes into Belgian law Articles 2 to 5 of that directive, which set out 
the exclusive rights conferred on authors in their work. 
Under Belgian law, a creation is protected by copyright where it is expressed in a 
particular form and it is original. Originality is defined unanimously in both case-
BROMPTON BICYCLE 
 
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law and legal literature as being the expression of the intellectual effort [Or. 11] 
of the author. The work must bear the author’s personal stamp, reveal creative 
choices on his part and thus be individualised. 
The Court of Justice of the European Union has also developed a body of case-law 
on copyright which is now well established. Thus, copyright protection may be 
granted to a creation only if it is original, that is to say the author’s own 
intellectual creation, which means that it ‘reflects the author’s personality’. 
According to the Court of Justice, that is the case if ‘the author was able to 
express his creative abilities in the production of the work by making free and 
creative choices’ (see, inter alia, the judgments of the Court of Justice of 16 July 
2009, Infopaq, C-5/08, EU:C:2009:465, in particular paragraphs 37 and 39, and of 
1 December 2011, Painer, C-145/10, EU:C:2011:798, paragraphs 87 to 89). 
The originality of a creation is assessed at the time of its conception. It cannot be 
challenged on account of something that has been created subsequently. 
Originality, however, is not the same as novelty, a criterion which exists in patent 
or design law. 
Lastly, it is now accepted that a utilitarian object — such as a bicycle — may be 
protected by copyright, provided that it is capable of being classified as an original 
creation. In the case of such objects, the only exclusions from the possibility of 
copyright protection are the shapes necessary to obtain a technical result. 
Some legal writers have developed a test to determine whether or not the shape of 
an object is dictated by the technical result to be achieved: this criterion is known 
as the inseparability or multiplicity of forms. 
[...] [Legal literature considerations] 
The Belgian courts have adopted that theory, recognising, for example, that 
copyright may exist in the shape of a feeding bottle (Liège, 8 September 2008, 
IRDI 2008, p. 409, and the references cited): 
[...] [Or. 12]  
The multiplicity of forms criterion comes from design law. However, in a recent 
judgment, the Court of Justice of the European Union held that: 
Article 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on 
Community designs must be interpreted as meaning that, in order to determine 
whether the features of appearance of a product are exclusively dictated by its 
technical function, it must be established that the technical function is the only 
factor which determined those features, the existence of alternative designs not 
being decisive in that regard (judgment of 8 March 2018, DOCERAM, C-395/16, 
EU:C:2018:172). 
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In that judgment, the Court departed from the multiplicity of forms test and 
employed the no-aesthetic-consideration test for the purposes of applying 
Article 8(1) of Regulation 6/2002, which excludes from protection as a 
Community design features of appearance of a product which are dictated by its 
technical function. 
In his Opinion of 19 October 2017, Advocate General Saugmandsgaard Øe also 
recommends that the multiplicity of forms theory should be discarded. He states 
that there is no requirement that the feature in question be the only means by 
which the desired technical function can be achieved (point 37 of the Opinion). 
The European legislature wished to ensure that features of a product which are of 
exclusively technical origin cannot be monopolised by a design (point 38). 
The no-aesthetic-consideration test would therefore have to be favoured. For the 
purposes of applying that test, the intention of the object’s designer is decisive: 
what is the technical result sought? Does this require the object to be a particular 
shape? 
One of the reasons given [for using this test] is, inter alia, to ensure that the 
provisions on patents are not circumvented by obtaining an exclusive right in a 
technical feature for a period longer than that provided for in the legislation 
applicable to patents and on less stringent terms. 
According to the Advocate General, the no-aesthetic-consideration test is also 
consistent with the Court’s case-law concerning trade marks (point 45): 
a sign consisting exclusively of the shape of a product is unregistrable by virtue 
[of the provisions that were interpreted] if it is established that the essential 
functional features of that shape are attributable only to the technical result’. The 
Court has held that ‘the ground for refusal … of registration’ as a trade mark of 
‘the shape of goods which is necessary to obtain a technical result’ ‘cannot be 
overcome by establishing that there are other shapes which allow the same 
technical result to be obtained’, in accordance with those provisions. It based this 
rejection, which is implicit but clear in my view, of the multiplicity of forms theory 
in particular on the finding that the refusal of registration is not subject to the 
condition that the shape at issue is the only one which could achieve the intended 
technical result and on the observation that a significant number of alternative 
shapes might become unusable for the trade mark proprietor’s competitors if such 
a criterion were considered to be decisive. [Or. 13] 
(c) Application to the present case 
In the present case, Get2Get submits that the appearance of its Chedech bicycle is 
dictated by the technical solution sought, that is to say a functional and 
lightweight bicycle which folds into three different positions (folded, unfolded 
and stand-by). 
BROMPTON BICYCLE 
 
13 
It states that it deliberately adopted the folding technique, previously covered by 
Brompton’s — now expired — patent, because it considers that method to be the 
most functional. Get2Get takes the view that the choice of that folding method is a 
technical constraint which dictates the appearance of the Chedech bicycle. 
Brompton and Mr SI submit that, in so far as there are other bicycles on the 
market which fold into three positions and are different in appearance from their 
own, they have copyright over their bicycle, the appearance of which 
demonstrates the existence of creative choices on their part and, therefore, 
originality. 
The applicants’ argument is based on the application of the multiplicity of forms 
theory, which has just been rejected by the Court of Justice of the European Union 
in relation to designs. 
Even though those intellectual property rights are based on a system of protection 
other than that provided by copyright, it is worth recalling that the multiplicity of 
forms theory was originally developed within the field of design law and then 
extended to copyright. 
Next, the arguments put forward by both the Court and the Advocate General in 
support of the [applicability of the] no-aesthetic-consideration theory in matters of 
design may be transposed to copyright. 
Thus, the protection granted to an author in respect of his work is an extended 
exclusive right which has a longer term than the protection available under patent 
law. The conditions for obtaining copyright are also different from, and in some 
respects less restrictive than, those laid down in patent law. 
In the present case, Brompton held a patent for its bicycle’s three-position folding 
system. Since that patent has now fallen into the public domain, any competitor 
[may] now produce and market a bicycle using the ‘Brompton’ folding technique. 
If that folding technique required the bicycle to be a specific shape and the 
applicants could use copyright law to prevent a competitor from entering the 
market by producing bicycles which are similar in appearance to the Brompton 
bicycle, they would effectively enjoy exclusivity in respect of their folding 
method, despite the fact that their patent for that method has expired. [Or. 14]  
However, it is apparent from the documents before this court that other producers 
have chosen to market bicycles which, although of different shapes, are 
nonetheless capable of being folded into three positions, like the Brompton 
bicycle. 
Consequently, the outcome of the present dispute depends on whether the 
existence of copyright — and thus the exclusive rights that flow from it — is 
excluded where the appearance for which protection is sought is necessary in 
order to achieve a particular technical effect. 
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It is therefore appropriate to stay the proceedings and consult the Court of Justice 
on the interpretation of Directive 2001/29 and the extent of the protection to be 
afforded to the appearance of a product where that appearance is dictated by 
technical constraints. 
If copyright can be granted in a shape which is necessary to achieve a given 
technical result, is there any relevance, for the purposes of determining whether or 
not a shape is necessary to obtain a technical result, in considering whether other 
possible shapes allow the same result to be achieved? 
This court is also unsure about the relevant criteria to be taken into account in 
assessing whether or not a shape is necessary in order to obtain a technical result. 
Thus, is the effectiveness of the shape in achieving the technical result sought of 
any relevance in this context or is the mere fact that the designer had the intention 
of achieving that result sufficient? Does the existence of an earlier, now expired, 
patent on the process for achieving the technical result have any bearing on the 
assessment of the existence of copyright in the present case? 
ON THOSE GROUNDS: 
[...] 
This court, ruling after hearing both parties and before giving judgment on the 
substance of the case, 
Refers the following questions to the Court of Justice of the European Union for a 
preliminary ruling under Article 267 of the Treaty on the Functioning of the 
European Union: 
– Must EU law, in particular Directive 2001/29/EC of the European 
Parliament and of the Council of 22 May 2001 on the harmonisation of 
certain aspects of copyright and related rights in the information 
society, which determines, inter alia, the various exclusive rights 
conferred on copyright holders, in Articles 2 to 5 thereof, be 
interpreted as excluding from copyright protection works whose shape 
is necessary to achieve a technical result? 
– In order to assess whether a shape is necessary to achieve a technical 
result, must account be taken of the following criteria: [Or. 15]  
• The existence of other possible shapes which allow the same 
technical result to be achieved? 
• The effectiveness of the shape in achieving that result? 
• The intention of the alleged infringer to achieve that result? 
BROMPTON BICYCLE 
 
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• The existence of an earlier, now expired, patent on the process 
for achieving the technical result sought? 
[...]