Design features that are determined by functionality are excluded from protection, other features are not

C-395/16

Doceram v Ceramtec

Design: Functionality

08 Mar 2018

The matter at hand

Doceram is a German company manufacturing technical ceramic components, particularly centring pins for welding (which, if we understand correctly, help to hold welding devices in the correct position during the welding process). Doceram has registered several Community designs which protect centring pins for welding. The German company CeramTec is also involved in the manufacture and sales of centring pins, in similar variants and shapes as those protected by the Community designs of Doceram.

Claiming infringement of its Community designs, Doceram initiated proceedings against CeramTec. In these proceedings, CeramTec issued a counterclaim for a declaration of invalidity of the contested designs, arguing that the features of the appearance of the welding pins were dictated solely by their technical function in the sense of article 8(1) of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs.

In addressing this claim, the Oberlandesgericht Düsseldorf observed first, that the designs at issue are new and have an individual character and, second, that alternative designs of the centring pins concerned existed. That court came to the conclusion that, for it to be able to apply Article 8(1) of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs, it needed to establish whether the existence of those alternative designs leads to the conclusion that the features of appearance of those products are not covered by this Article 8(1), or whether it is also necessary to ascertain whether the technical function was the only factor which dictated those features (preliminary question 1). Moreover, the referring court asked whether that finding must be based on the perception of an ‘objective observer’ (preliminary question 2).

The judgment of the ECJ

In answering the questions, the ECJ first clarifies that neither the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs nor the Design DirectiveDirective 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs set out what is meant by the expression ‘features of appearance of a product which are solely dictated by its technical function’. For the sake of a uniform application of EU law, the ECJ holds that the expression designates “an autonomous concept of EU law which must be interpreted in a uniform manner in all the Member states” (paragraph 21).

In assessing the meaning of this concept, the ECJ first addresses what is not to be understood as such functional features. In doing so, it considers on the one hand that “the existence of alternative designs which fulfill the same technical function as that of the product concerned is [not] the only criterion for determining the application of that article” (paragraph 22). In other words: a design feature can be considered to be dictated solely by its technical function when alternative designs fulfill that same function. On the other hand it is considered that the exclusion of protection should not be understood to require that the appearance of the product has an aesthetic aspect (paragraph 23) – as is also stipulated in recital 10 of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs.

Then, in what is the core of the judgment, the ECJ rules that article 8(1) of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs aims to exclude from design protection features of appearances “in which the need to fulfil a technical function of the product concerned is the only factor determining the choice by the designer of a feature of appearance of that product, while considerations of another nature, in particular those related to its visual aspect, have not played a role in the choice of that feature” (paragraph 26).

The ECJ believes that this interpretation of Article 8(1) of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs is supported by the objective pursued by it, insofar as that regulation seeks to prevent technical innovation from being hampered by granting design protection to solely technical features. If the existence of alternative designs fulfilling the same function of that of the product itself was sufficient to prevent the application of article 8(1), the ECJ estimates that “a single economic operator would be able to obtain several registrations as a Community design of different possible forms of a product incorporating features of appearance of that product which are exclusively dictated by its technical function” (paragraph 30). The ECJ deems such as unacceptable, as it would deprive article 8(1) of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs of its full effectiveness.

With regard to preliminary question 2, on the ‘objective observer’, the ECJ finds that, in order to determine whether the relevant features are solely dictated by a technical function, the national court must take account of all of the objective circumstances relevant to each individual case, where the existence of alternative designs is of no decisive importance. The ECJ points out that the national courts do not have to base such findings on the perception of an ‘objective observer’.

Commentary

In ruling that the existence of alternative designs is not of decisive importance for a design to be ‘solely dictated by its technical function’, the ECJ has finally brought clarity on a much debated issue. It effectively eliminated the ‘multiplicity of forms’ or ‘result-oriented’ approach. Supporters of that approach, which was adopted by some national courts, argue that a design is not solely dictated by its technical function if such function could have been achieved in at least one other way (thus, by means of an ‘alternative design’).

The ECJ, instead, comes to a finding that can be understood as an exclusion from protection of design features where ‘form follows function’, but only in its strictest sense, not in modernist sense of no-frills design: where a design feature is nothing more than (or: coincides with) its bare functionality, this feature is excluded from design protection on grounds of Article 8(1) of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs – irrespective of the existence of alternative designs which fulfill the same technical function. Any feature that is the result of another (not necessarily aesthetic) consideration, however, falls outside the scope of this Article 8(1) and may consequently be the subject of design protection.