In this decision recently rendered by the CJEU on 8 March 2018 Europe’s highest court has finally taken a stand on the controversially disputed question if and under which conditions the appearance of a product that is solely dictated by its technical function can be protected as a registered Community design (RCD).

The Claimant alleged infringement of various EU designs which protected so-called centring pins for welding in different geometrical shapes (see figures below).

The action was targeted at the distribution of similar products by the Defendant, who argued by contrast that the allegedly infringed designs entirely consisted of features which were solely dictated by the object’s technical function and, hence, not protectable under design law. By means of a counterclaim the Defendant aimed to declare the Claimant’s RCDs invalid on these grounds.

In the first instance, the District Court (Landgericht) of Düsseldorf agreed with the Defendant and dismissed the Claimant’s claim. In the appeal proceedings initiated by the Claimant, the Higher Regional Court (Oberlandesgericht) of Düsseldorf pointed to the differing approaches in the case-law and in legal literature and asked the CJEU the question under what conditions a design consisting of features solely dictated by technical function shall be excluded from Community design protection and from which point of view this question is to be assessed. So far, case-law in Europe had been very inconsistent.

The starting point of the legal assessment is Article 8 of the Council Regulation (EC) No 6/2002 on Community Designs. Pursuant to this provision, a Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function. The criteria which have to be applied in this assessment have been subject to much controversial debate. In the EU, there had been two conflicting approaches as regards the question, if and when the shape of a product was solely dictated by technical purposes. In Germany as well as in quite a number of other countries, the predominant opinion was that design protection shall only be excluded if no alternative designs existed which fulfilled the same technical function (“multiplicity-of-forms-theory”). Given that in most cases it is somehow possible to shape products differently but still achieve the same technical effect, this approach resulted in an exclusion of design protection only in very rare cases. In contrast, the opposing view refused design protection if the features at issue were only chosen due to technical reasons without giving any weight to aesthetic considerations (“no-aesthetic-consideration-test“).

In its decision the CJEU clearly rejected the first approach. Community design protection shall be denied if and as far as the features of appearance of the product exclusively result from by technical consideration without aesthetic reasons having played any role in the development of the visual appearance of the product. The question whether there exist any other design alternatives that could achieve the same technical effect was deemed irrelevant by the court. The opposite view could allow an applicant to register all technical design alternatives for his product, and by this means to gain a level of protection that equals patent protection without having met the legal requirements set forth by patent law.

The question if a feature is solely dictated by technical function is furthermore not determined from the view of an objective observer. An overall assessment of all objective relevant circumstances of the individual case must be made which takes into consideration, in particular, the objective circumstances in relation to 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.

The decision of the CJEU brings clarity regarding the conflicting views previously taken in Europe on this topic. Comparable to the development in trade mark law, the decision contributes to a clear delimitation between protection of the design of a product as opposed to technical features which are protected by patent law. Moreover, this decision will most likely lead to an exclusion of several features of appearance due to their technical purpose which, until now, had been eligible for design protection in many European countries. A legal uncertainty will remain in terms of the question under which conditions the appearance of a product must be considered not to result from any aesthetic considerations. We will have to see how Courts and Intellectual Property Offices will implement the decision of the CJEU.