Opinion of the Advocate General — ECLI:EU:C:2025:465
Date: 2025-06-19
Language of the case: Spanish

Summary C-323/24 – 1 
Case C-323/24 
Summary of the request for a preliminary ruling pursuant to Article 98(1) of 
the Rules of Procedure of the Court of Justice 
Date lodged: 
2 May 2024 
Referring court: 
Juzgado de lo Mercantil Número 1 de Alicante (Spain) 
Date of the decision to refer: 
13 December 2023 
Applicant: 
Deity Shoes, S. L.  
Defendants: 
Mundorama Confort, S. L. 
Stay Design, S. L 
      
Subject matter of the main proceedings 
Intellectual property – Community designs – Scope of the protection – Novelty – 
Individual character – Genuine design activity – Features of appearance of 
footwear – Customisation of components offered in an existing catalogue – 
Degree of customisation required – Freedom of the designer in developing the 
design – Possibility of protecting the appearance of all or part of a product which 
is produced on the basis of known fashion trends. 
Subject matter and legal basis of the request 
Request for a preliminary ruling on interpretation – Article 267 TFEU – 
Interpretation of Articles 4, 5, 6, 14 and 25 of Council Regulation (EC) No 6/2002 
of 12 December 2001 on Community designs (‘Regulation No 6/2002’ or ‘RCD’). 
EN 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-323/24 
 
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Questions referred for a preliminary ruling 
(a) In order for a design to be covered by the system of protection under 
Council Regulation (EC) No 6/2002 of 12 December 2001, is it necessary for 
there to be a genuine design activity in such a way that the design is the result of 
the intellectual effort of its creator? And, in that regard, may a combination of 
components on the basis of models whose features of appearance are for the most 
part predetermined by the trading undertakings, with the effect that modifications 
to certain features are to be regarded as ad hoc and incidental, be regarded as a 
genuine design activity? 
(b) In the light of the foregoing, may all or some of the feature[s] of appearance 
of a product resulting from the customisation of designs that are offered by 
Chinese trading undertakings, in accordance with those undertakings’ catalogues, 
be regarded as having individual character within the meaning of Article 6 [of] 
Council Regulation (EC) No 6/2002 of 12 December 2001, where the activity of 
the owner of the design is limited to marketing those designs in the EEA without 
modification or with specific modifications of components (such as soles, rivets, 
laces, buckles and so forth) and the features of appearance are predetermined for 
the most part by the trading undertakings? In that regard, is it relevant that the 
components are not designed by the European marketing undertaking either, but 
are components offered by the trading undertaking itself in its catalogue? 
(c) Must Article 14 [of] Council Regulation (EC) No 6/2002 of 12 December 
2001 be interpreted as meaning that a person may be regarded as the designer in 
relation to a design where, on the basis of a design offered by trading undertakings 
in accordance with a catalogue, he or she has merely customised that prior design 
by modifying components also offered by the trader, and those components have 
not been designed by the European marketing undertaking? In that regard, is it 
necessary to prove a specified degree of customisation in order to demonstrate that 
the final form departs significantly from the original design and thus that 
authorship may be claimed? 
(d) Without prejudice to the foregoing, in a case such as the present case, in 
view of the particular characteristics of footwear designed on the basis of trading 
operators’ sample books and, in so far as the ‘design’ is limited to selecting 
existing designs from a sample book and, where appropriate, to varying some of 
their components, from those in the catalogue which the manufacturer itself (the 
trading undertaking) offers, all in accordance with fashion trends, must it be 
understood that those fashion trends: (a) restrict the designer’s freedom in such a 
way that minor differences between the registered (or unregistered) design and 
another model are sufficient to give a different overall impression or, conversely, 
(b) detract from the individual character of the registered (or unregistered) design 
with the effect that those elements or components are of less importance in the 
overall impression they produce on the informed user in so far as they result from 
known fashion trends when compared with another model? 
DEITY SHOES 
 
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Provisions of European law relied on 
Charter of Fundamental Rights of the European Union: Article 17(2) 
Articles 4, 5, 6, 14 and 25 of Council Regulation (EC) No 6/2002 of 12 December 
2001 on Community designs 
Provisions of national law relied on 
1. Case-law. 
1.1. Judgment of the Supreme Court (STS), Civil Section 1 of 25 June 2014 
(ROJ: STS 2804/2014 – ECLI:ES:TS:2014:2804): 
‘1. In defining the scope of protection conferred by a registered design, 
Article 9(1) of Directive 1998/71/EC provides that it “shall include any design 
which does not produce on the informed user a different overall impression”. 
Paragraph 2 adds: “In assessing the scope of protection, the degree of freedom of 
the designer in developing his design shall be taken into consideration”. 
2. The General Court has held that “the designer’s degree of freedom in 
developing his design is established, inter alia, by the constraints of the features 
imposed by the technical function of the product or an element thereof, or by 
statutory requirements applicable to the product. Those constraints result in a 
standardisation of certain features, which will thus be common to the designs 
applied to the product concerned” (judgment of the General Court of 
21 November 2013, T-337/12). 
It also rejected the proposition that a general design trend could be regarded as a 
factor which restricts the designer’s freedom, since it is precisely that freedom on 
the part of the designer which allows him to discover new shapes and new trends 
or even to innovate in the context of an existing trend (judgments of the General 
Court of 22 June 2010, T-153/08, and of 13 November 2012, T-83/11 and 
T-84/11). 
Although those judgments were issued in relation to Regulation No 6/2002, the 
case-law contained therein is also applicable to Directive 1998/71/EC of 
13 October, since the issue is treated in the same way in both texts. 
3. Since the Supreme Court is aware that the issue is disputed, it considers that 
fashion trends, understood in a broad sense, are not a factor which restricts the 
designer’s freedom, but that they are relevant in determining the distinctive 
character of the registered design and, consequently, the scope of protection they 
grant to the owner of the design and the degree of differentiation that a 
competitor’s design must have in order for it to produce a different overall 
impression. 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-323/24 
 
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If those trends existed prior to the application for registration of the design, that is 
to say, if the registered design followed the market trends that existed at the time it 
was applied for, that will diminish its individual character. Therefore, as explained 
above, if the similarities between the product considered to be infringing and the 
registered design lie in elements that correspond to fashion trends existing when 
the registration was applied for, those elements will have less importance in the 
overall impression they produce on the informed user and it will be necessary to 
consider that both designs produce a different overall impression on the informed 
user, and that there will therefore be no infringement, even with a lesser degree of 
differentiation than would be required if the registered design did not reflect those 
fashion trends. 
If, however, those fashion trends post-date the registration of the design, with the 
result that it may be inferred that such a design has a considerable degree of 
individuality because it anticipated fashion trends, or was even decisive in the 
development of those trends, that greater individual character cannot be diluted by 
allowing competitors to market products with a similar design, which do not 
produce a different overall impression on the informed user, on the pretext that the 
freedom of the designer of the subsequent design is restricted by the requirements 
of fashion. 
4. The consequence of the foregoing is that an interpretation of the applicable 
national legislation in the light of the wording and purpose of the directive did not 
require market trends to be regarded as a restriction of the designer’s freedom for 
the purposes of determining the degree of protection of the registered design under 
the Estatuto de la Propiedad Industrial (Industrial Property Law, ‘IPL’).’ 
Succinct presentation of the facts and procedure in the main proceedings 
1 On 10 December 2021, Deity Shoes, S. L. brought an infringement action against 
Mundorama Confort S.L. and Stay Design S.L. 
2 On 12 April 2022, Mundorama Confort S.L. and Stay Design S.L. replied to the 
claim by filing a counterclaim seeking a declaration of invalidity of the applicant’s 
designs. 
3 On 24 May 2022, Deity Shoes S.L. responded to the counterclaim. 
4 Deity Shoes S. L. has brought actions for infringement of both registered and 
unregistered Community designs for various models of shoes against Mundorama 
Confort S.L. and Stay Design S.L. 
5 Mundorama Comfort S.L. and Stay Design S.L. are both counterclaiming, for 
certain models, the right of prior use pursuant to Article 22(1) of the RCD, and, 
with regard to the points relevant in the present case, the invalidity of the Deity 
Shoes models on the ground of lack of novelty and individual character. 
DEITY SHOES 
 
5 
6 They also claim that there is no innovation involved in the production of the 
designs since the relevant undertakings market products offered by trading 
undertakings located entirely in China. 
7 In that regard, it is common ground that the two undertakings operate in the same 
sector in the marketing of footwear. 
8 They are not undertakings dedicated to innovation, but are engaged in purchasing 
footwear in China in a market where the relevant factors are volume and price. 
9 In that regard, it is common ground that the process leading to the marketing of 
the footwear is as follows: 
(i) the parties’ suppliers are trading undertakings located entirely in 
China, and they cover for them the entire operation of import and 
export of the products; 
(ii) the Chinese trading undertakings transfer to the relevant staff of the 
parties – usually sales and marketing staff – various product sample 
books; 
(iii) the staff members concerned analyse the products in the sample books 
and propose to the suppliers specific modifications of their features 
(such as colour, some materials, the location of the buckles, laces and 
other decorative elements); 
(iv) once the characteristics of the final product have been agreed, the 
Chinese suppliers send the goods to Spain together with the 
appropriate certificates detailing the process of customisation of the 
footwear. 
10 In that respect, it is common ground that the models which Deity Shoes claims it 
owns are customised models based on the models offered by the Chinese trading 
undertakings through their catalogues. 
11 No certificates of customisation have been produced to enable the referring court 
to determine what changes have been made to each of the models. 
12 It has not been established that the applicant has a design team or that the designs 
that it claims have been infringed have been the subject of genuine design activity. 
At most, changes have been made to the basic model offered in the Chinese 
trading undertaking’s catalogues. 
13 In other words, the features of appearance of the models marketed are mostly 
predetermined by the model offered by the Chinese supplier, with the effect that 
modifications of certain elements must be considered ad hoc and incidental (such 
as, for example, colour, some materials, the location of the buckles, laces and 
other decorative elements). 
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14 According to the referring court, price is a very important factor in that sector and 
any change to the basic model, involving greater customisation, leads to an 
increase in costs that reduces the margins of the European marketing 
undertakings. There is therefore no real incentive to make substantial changes to 
the basic models offered by the Chinese trading suppliers. 
15 Changes to specific elements such as colour, some materials, the sole, the location 
of the buckles, laces and other decorative elements are also shown in the catalogue 
offered by the trading undertaking. 
16 Lastly, the registered designs and unregistered models do not have any fashion 
component at all. In fact, they are inspired by known fashion trends that make it 
possible to secure the sale of the large orders placed with factories in China. In 
that respect, it may be understood that, in a sector in which the main factors to be 
taken into account are volume and price, the designers’ margin for manoeuvre is 
very limited in comparison with other types of footwear with a fashion component 
that lasts several seasons, since there is no investment in innovation. 
17 The models in question must therefore reproduce aesthetic trends that are well 
known in the world of fashion; they are re mass-produced by the trading 
undertakings at low cost for subsequent marketing on the EU market. 
The essential arguments of the parties in the main proceedings 
A. For Deity Shoes 
18 As regards the first question, Deity Shoes points out, through its defence, that, 
where a design is considered to comply with the requirements of novelty and 
individual character, it cannot be denied that there is an ‘intellectual effort’ or a 
‘genuine design activity’ behind it. It therefore argues that there is no need to refer 
the first question for a preliminary ruling. However, should it be decided to raise 
that question, Deity Shoes suggests that the question be rephrased as follows: 
‘Does Council Regulation (EC) No 6/2002 of 12 December 2001 on Community 
designs require a designer, in order to benefit from the protection it confers, to 
make an intellectual effort additional to that of configuring the appearance of the 
whole or a part of a product, resulting from the specific features relating, in 
particular, to the lines, configuration, colour, shape, texture and/or materials of the 
product itself or of its decoration?’ 
19 As regards the second question, Deity Shoes states that it is irrelevant that the 
modifications are made using options ‘from those in the trading undertaking’s 
own catalogue’. It is also a well-known fact that footwear components are 
designed and manufactured by the ancillary component industry and are rarely 
sold on an exclusive basis. Finally, in order to answer the question, the type and 
number of components offered by the hypothetical trading undertaking must be 
taken into account, as well as the possibility for the designer to incorporate third-
DEITY SHOES 
 
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party components, as no manufacturer or supplier of footwear components has an 
unlimited catalogue, nor does the catalogue limit the options available to the 
designer to incorporate third-party components. Moreover, it should be borne in 
mind that a limited catalogue of components may give rise to an infinite number 
of theoretical possibilities, just as combinations of 27 letters make it possible to 
form all the words in the Spanish language. The applicant therefore submits that 
there is no need to refer the second question for a preliminary ruling. 
20 As regards the third question, the applicant argues that as regards the requirement 
for a specified degree of ‘customisation’, the RCD already provides that the 
condition to be fulfilled by a combination of features or components is that the 
combination of components must be new, that is to say, must not have previously 
been made public, and that it must have an individual character, that is to say, the 
overall impression produced by the design on informed users must differ from the 
overall impression produced by any other design which has been made available 
to the public. 
21 In that respect, it is unclear why the case of an undertaking that obtains its 
supplies from a Chinese trading company should be treated differently from any 
other design which combines isolated components or features of known designs, 
whether or not they are in a catalogue, from China or any other country, or which 
otherwise form part of the portfolio of standard shapes. 
22 As regards the final question referred, the applicant submits, in essence, that the 
fact that the design is obtained by combining different components included by an 
undertaking in its catalogue does not restrict the designer’s freedom; the designer 
may seek an overall impression that differs from the overall impression produced 
by any other footwear model that has been made available to the public, either by 
seeking a different combination of components, which is new and has an 
individual character, or by modifying one of those components. It adds that that is 
the case for all footwear designers. 
B. For Mundorama Comfort S.L. and Stay Design S.L. 
23 As regards the first question, Mundorama Confort S. L. and Stay Design S. L. 
maintain, through their defence, that it is indeed necessary to refer that question 
for a preliminary ruling in so far as the substance of the question is whether the 
RCD has the flexibility to allow access to protection for any designs, irrespective 
of whether or not they are the result of a prior creative process constituting a 
‘genuine design activity’. They recognise, however, that Articles 4(1) and 
25(1)(b) of the regulation have nothing to say regarding the creative process and 
that the wording of the regulation itself does not seem to require a creative 
process. However, in the defendants’ view, such a requirement cannot be ruled out 
on the basis of textual interpretation. 
24 In view of the foregoing, the defendants submit that the question should be: Does 
Regulation (EC) No 6/2002 require that a design, in order to fall within the scope 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-323/24 
 
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of the protection conferred by the regulation on both registered and unregistered 
designs, must be the result of the intellectual effort of its designer and not a 
product that is developed on the basis of known trends with minor modifications 
taken from the Chinese trading undertaking’s own catalogue, and with no fashion 
component? 
25 With regard to the second question, the defendants argue that the substance of that 
question, which is closely linked to the first, is to be found in the question whether 
(i) the RCD has the flexibility to allow access to protection for any designs that 
have (or have not) undergone mere ‘customisation’ of their components; and (ii) it 
is relevant that those components are also not the result of ‘a genuine design 
activity’ but are offered by Chinese trading suppliers to all operators in the sector. 
26 In that respect, the defendants argue that the second question should be rephrased 
as follows: ‘For the purposes of protecting the appearance of all or part of a 
product under Regulation (EC) No 6/2002 on Community designs, is it relevant 
that none of its components is the result of the intellectual effort of its creator, but 
the components are offered in a supplier’s catalogue where the catalogue is not 
offered exclusively to an undertaking but is offered to all operators in the sector? 
Or, on the other hand, is it relevant, for the purposes of protecting the appearance 
of all or part of a product under Regulation (EC) No 6/2002, that the applicant for 
or holder of protection, on the basis of a prior design offered by suppliers, merely 
customised that prior design by modifying components also offered by the 
supplier in its catalogue to the various operators in the sector?’ 
27 As regards the third question, those parties consider that it should be rephrased as 
follows: ‘Is Article 14 of the regulation to be interpreted as meaning that a person 
who, on the basis of a prior design offered by Chinese trading undertakings, has 
merely customised that prior design by modifying components also offered by the 
Chinese trading undertaking that have not been designed by the European 
marketing undertaking, may be regarded as the owner of the design? In that 
regard, is it necessary to prove a specified degree of customisation in order to be 
able to claim ownership of the design?’ 
28 As regards the fourth question, the defendants essentially agree with the content of 
the question referred. 
Succinct presentation of the reasoning in the request for a preliminary ruling 
29 The referring court asks the Court of Justice about the scope of protection of 
Community designs and ownership of designs in the case of footwear 
undertakings that have merely chosen between various options offered by a 
trading undertaking’s catalogue, where the features of appearance are largely 
predetermined by the model offered by the Chinese supplier, with the effect that 
modifications of certain elements must be regarded as ad hoc and ancillary. 
DEITY SHOES 
 
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30 By the first question referred for a preliminary ruling, the Court of Justice is asked 
about the conditions necessary for it to be understood a design and, in particular, 
whether the analysis must be limited to the elements of novelty and individual 
character or, as the case may be, whether there is an additional requirement that 
applies in order for the designer to be able to claim ownership. It is asked whether 
there is an implicit requirement in EU law concerning the need for a genuine 
design activity. That is to say, whether it is necessary, in order for a design to be 
covered by the system of protection under Regulation No 6/2002, for there to be a 
genuine design activity, and that the design is therefore required to be the result of 
the intellectual effort of its creator and not a product that is developed on the basis 
of known fashion trends? 
31 As regards the first question referred for a preliminary ruling, the referring court 
considers that it is necessary to determine whether protection may be accorded to 
the appearance of all or part of a product that is the result of the customisation of 
designs offered by Chinese trading undertakings in accordance with those 
undertakings’ catalogues, where the activity of the owner of the design is limited 
to marketing those designs in the EEA without modifications or with 
modifications of components (such as soles, rivets, laces, buckles and so forth) 
based on options in the catalogue offered by the trading undertaking. In that 
regard, it asks whether it is relevant that none of the components is genuinely 
designed by the undertaking marketing the final product but the components are 
offered by the Chinese trading undertaking in the catalogue, where the catalogue 
is not offered exclusively to one undertaking but is offered to all operators in the 
sector. 
32 The second question referred for a preliminary ruling changes the scope of the 
discussion. The Court of Justice is asked about the very concept of ‘individual 
character’ in a case such as the present case, where the design is based on a model 
offered in a Chinese trading undertaking’s catalogue, which not only follows 
general and well-known fashion trends but is the result of the ad hoc alteration of 
components also offered in a catalogue by trading undertakings, without a fashion 
component. 
33 In models of that type, the fact that inspiration is taken from known fashion trends 
is relevant, as that is what makes it possible to secure the sale of large volumes of 
orders. In products of that type, it seems that the differential element is not the 
design but the price of the product, as that is what makes orders and subsequent 
marketing profitable. 
34 By its third question, the referring court asks about the concept of ‘designer’ such 
that, in the event of a dispute as to the existence of a design, the owner of the 
design must prove the existence of a specified degree of customisation in order to 
be able to claim authorship. 
35 By its fourth question, the referring court reproduces the case-law of the Supreme 
Court set out in the judgment of Civil Section 1 of 25 June 2014, 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-323/24 
 
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STS 2804/2014 – ECLI:ES:TS:2014:2804, and asks whether, given the particular 
characteristics of the footwear described in the terms set out in the fourth question, 
which follows fashion trends, those fashion trends should be regarded as (a) 
restricting the designer’s freedom in such a way that minor differences are 
sufficient to give a different overall impression or, conversely, (b) detracting from 
the distinctiveness of the design with the effect that those elements or components 
are of less importance in the overall impression they produce on the informed user 
in so far as they result from known fashion trends.