According to Article 8(1) of the Community Design Regulation (EC) no 6/2002 (CDR), no design protection may be granted to features of appearance of a product that are “solely dictated by its technical function”. Over the years, this particular exclusion ground and the interpretation hereof has been widely debated.
In its recent judgment in case Doceram v. CeramTec (C-395/16), the Court of Justice of the European Union (CJEU) has ruled that the so-called technical exclusion ground applies if the technical function was the only factor determining the choice of design.
Doceram is a German company that manufactures technical ceramic components and the proprietor of several registered Community designs protecting centring pins for welding in three different geometrical shapes. CeramTec is a competing, German company which manufactures centring pins in the same variants as those protected by Doceram’s design registrations. The case started when Doceram initiated infringement proceedings against CeramTec in Germany. CeramTec responded by bringing a counterclaim for a declaration of invalidity of Doceram’s design registrations.
In the first instance, the court found that the features of appearance of the contested designs were solely dictated by their technical function and therefore not subject to design protection. Hence, Doceram’s Communty design registrations were found to be invalid.
Doceram appealed this decision to the court of appeals, the Higher Regional Court in Düsseldorf. The court of appeals observed that alternative designs to Doceram’s contested centring pins exist and that these alternative designs are not protected by Community design law. On this basis, the court of appeals considered it necessary to establish whether the existence of such alternative designs automatically leads to the conclusion that the features of appearance of the contested designs are not solely dictated by its technical function, or whether it is also necessary to ascertain whether the technical function was the only factor which dictated those features. Thus, the court of appeals referred the following two questions to the CJEU for a preliminary ruling:
1. Are the features of appearance of a product solely dictated by its technical function, within the meaning of Article 8(1) of [Regulation No 6/2002] which excludes protection, also if the design effect is of no significance for the product design, but the (technical) functionality is the sole factor that dictates the design
2. If the Court answers Question 1 in the affirmative:
From which point of view is it to be assessed whether the individual features of appearance of a product have been chosen solely on the basis of considerations of functionality? Is an “objective observer” required and, if so, how is such an observer to be defined?
End of discussion
With its answer to the first question, the CJEU has ended years of discussion on the interpretation of the word solely in Article 8(1) of the CDR by stating 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 and that the existence of alternative designs is not decisive in that regard. In other words, it does not automatically follow from the existence of alternative designs which fulfil the same function as the design in question that this design is not solely dictated by its technical function. Instead, the relevant question is whether its features of appearance are exclusively dictated by its technical function meaning that in order for the technical exclusion ground to apply it must be established that the technical function was the only factor determining those features.
In its answer to the second question, the CJEU then provides some much-needed guidance on how to determine whether the relevant features of appearance of a product are solely dictated by its technical function. In this regard, the CJEU states that the national court must take account of all the objective circumstances relevant to each individual case meaning that the assessment must be made having regard to the design at issue, the objective circumstances indicative of the reasons which dictated the choice of features of appearance of the product concerned, or information on its use or the existence of alternative designs which fulfil the same technical function, provided that those circumstances, data, or information as to the existence of alternative designs are supported by reliable evidence. Further, the CJEU states that there is no need to base the assessment on the perception of an “objective observer”.
Notably, the CJEU does not clarify which of the “objective circumstances” that will be decisive in the assessment of whether a product’s features of appearance are solely dictated by its technical function, nor do they provide any guidance as to what kind of evidence that will be decisive in this regard.
By the looks of it, the CJEU’s decision seems to make the lives of design owners slightly more difficult as it paves the way for more design registrations covering functional products being found invalid on the basis of Art. 8(1) in the CDR. However, it must be noted that the burden of proof still lies with the party asserting invalidity of the registered design, and, thus, the question of what kind of evidence that will be decisive in determining whether a certain feature of appearance is purely functional now becomes highly relevant. Going forward, it will therefore be very interesting to see how national courts around Europe will apply the CJEU’s answer to the second question in practice.