Paris, 13th April 2018 - The Court of Justice of the European Union has just issued an interesting and expected decision regarding the exclusion of functional forms by design law and the non-determinative nature of the existence of alternative designs (CJEU, 2nd Chamber, 8 March 2018, Aff C-395/16)

The decision is related to the Article 8 (1) of the Council Regulation (EC) No 6/2002 of 12 December 2001 regarding Community designs and according to which a Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function .

So far, despite several discussions, there has been no European uniform interpretation regarding the accurate application of such exclusion. However, two main opposing theories tried to put forward different arguments in order to demonstrate that the design in question had not been imposed exclusively by its technical function:

- The first one consisted in applying the "multiplicity of forms" criteria: the technical function of the design in question could be obtained by another configuration, namely an alternative design;

- The second one, on the contrary, rejected such criteria and considered that it was necessary to inquire whether there were other considerations included in the design project than the technical function (particularly aesthetic considerations).

Consequently, the decision of the Court of Justice of the European Union is timely and will definitively clarify this grey area.

In this case, the company DOCERAM owned several registered designs for geometrically centring pins for welding. Finding that the company CERAMTEC manufactured and marketed almost identical centring pins, DOCERAM brought an action against this company for violation of its designs rights. The defendant then instituted a counterclaim for a declaration of invalidity of the said designs, considering that the features of appearance of the products in question were dictated solely by their technical function.

Due to the circumstances, the Oberlandesgericht Dsseldorf (the Higher Regional Court, Dsseldorf) decided to stay the proceedings and questioned the Court of Justice of the European Union on whether the existence of alternative designs is decisive for assessing that the features of appearance of a product are exclusively dictated by its technical function. In addition, the Higher Regional Court wishes to know from which point of view the assessment should be made.

The Court of Justice of the European Union has definitively settled the discussion by stating that Article 8 (1) of Council Regulation No 6/2002 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". In other words, the existence of alternative designs, which ensure the same technical function, has no decisive impact on this assessment and does not allow to balance or even cancel the exclusively functional nature of the product.

However, the Court specifies that such assessment must be made in concreto, by taking account of all the objective circumstances relevant to each individual case . In this case, alternative designs may therefore be taken into account, alongside other elements, to support the assessment.

Therefore, we would like to draw your attention to the scope of this decision and its specific and significant implications.

Indeed, some are tempted to seek a protection on a functional aspect of a product through a Community design, in order to avoid tighter requirements for obtaining a patent and to benefit from a term of protection which is longer than that which results from a patent (i.e. 5 additional years).

However, designs applications are only submitted to the Office for a limited and minimal examination. This means that obtaining designs rights does not prevent third parties from subsequently challenging the validity of such designs. Thus, the cancellation of a design registration might prove to be economically dramatic regarding the investments made and might be profitable to competing companies which are vigilant and on guard.

Therefore, instead of relying on an eventual uncertain protection through designs, it is usually advisable to conduct a preliminary analysis of your project and particularly to examine its functional aspects to choose a reliable protection through the most appropriate intellectual property right. Thus, in some cases, it may be more appropriate to seek an additional protection through a patent, subject to the fulfilment of all patentability requirements.