This case involves a CJEU preliminary ruling on the effect of national laws, which reduce and/or extinguish the terms of protection for copyright, which are not compatible with EU laws such as the EU Term Directive and/or international agreements that have an effect on EU member states such as the TRIPS Agreement and the Berne Convention.

In 1983, Mr. Gerard van den Berg designed two chairs he named ‘Charly’ and ‘Chaplin’:


chair 1chair 2


“Charly” chair model “Chaplin” chair model

 In 1988, Mr. Van den Berg registered the chairs as models under the Benelux law called the Uniform Law on Designs and Models. In 1990 he assigned the copyright in the chair designs to Montis Design BV.

At that time, the Uniform Law on Designs and Models contained a special provision in its Article 21(3). This Article provided that designs could benefit both from the protection as registered designs and from protection under copyright law if they have "outstanding artistic character".

However, to benefit from copyright protection and design right protection together, the author or his successor needed to file a maintenance declaration along with the fee, before the five year term of protection for the registered design expired. Unfortunately, Montis and Mr. van den Berg failed to file this maintenance declaration, and therefore both design and copyright protection in the ‘Charly’ and ‘Chaplin’ chair designs lapsed in the Benelux in 1993.

One of the main issues in this case was that Article 21(3) Uniform Law on Designs and Models is contrary to Article 5(2) of the Revised Berne Convention, which provides that copyright must not be subject to any formality. Having realized this, the governments of Belgium, the Netherlands and Luxembourg deleted Article 21(3) from the Uniform Law in December 2003.

In 2008 Montis brought legal proceedings against Goossens, in the Dutch courts, on the ground that they had put on sale the ‘Beat’ chair model which infringed its copyright in the ‘Charly’ and ‘Chaplin’ chairs. In its defence, Goossens contended that, in the absence of a maintenance declaration, that copyright had been extinguished.

Montis claimed that its copyright should be held to have been restored by virtue of the repeal, on 1 December 2003, of Article 21(3) of the Uniform Law on Designs and Models, since the effect of that repeal ought to be retroactive. In the alternative, Montis claimed that its copyright should be held to have been restored following the adoption of the EU Term Directive.

The case was appealed to the Benelux Court of Justice who referred two primary questions to the CJEU, paraphrased as follows:

(1) Does the EU Term Directive mean that the terms of protection in that Directive are applicable to copyright that was originally protected by national copyright law but which lapsed before 1 July 1995?
(2) Does the EU Term Directive preclude national legislation, which initially granted copyright protection to a work but which caused that copyright to be extinguished because of non-compliance with a formal requirement?

The CJEU said these questions can be answered together and, put simply, the its answer on both was no.

 The CJEU observed that the use of the wording in the EU Term Directive, was in the present indicative tense regarding applying the terms of protection provided for in that Directive. The CJEU said that this reveals that the legal effect should be given to the situation as existing precisely on 1 July 1995 and not on a date earlier than or later than that date. Consequently, if copyright was no longer protected on that date, then the terms of protection laid down by that Directive do not apply to the work concerned.

The fact that the extinction of that copyright, prior to 1 July 1995, may not have been compatible with Article 5(2) of the Berne Convention does not call that conclusion into question.

The first reason for this was that in Article 10(2) of the EU Term Directive, the EU legislature chose to refer to works and subject matter which are protected ‘pursuant to national provisions on copyright or related rights’. The CJEU said it is neither the object nor the effect of this provision in the EU Term Directive to determine the conditions under which that protection could be extinguished before 1 July 1995. That issue was to be governed by the applicable national legislation.

The second reason for this was that while Article 9(1) of the TRIPS Agreement states that the EU must comply with Article 5(2) Berne Convention, the TRIPS Agreement had only entered into force on 1 January 1995. In other words, this was after both the date when the EU Term Directive was adopted and when it was entered into force. In addition, under Article 65(1) of the TRIPS Agreement, the EU was not obliged to apply the provisions of that Agreement before 1 January 1996. There was therefore no obligation to restore copyright and no need to interpret the EU Term Directive in the way suggested by Montis.

As such, the main significance of this case is that we may be able to draw useful parallels if anyone tried to challenge the term consequences of UK legislation cutting down length of protection of industrial designs and denying their copyright term. Contrary to academic suggestions, such attempts might not be successful.

Link to Judgment

 Judgment Date: 20 OCTOBER 2016