Existence of alternative designs with same function does not as such imply that design is not dictated by technical function

C‑684/21

Papierfabriek Doetinchem

Design: Functionality

02 Mar 2023

The matter at hand

Sprick is a company manufacturing a packing-paper dispenser. It is the proprietor of a Community design concerning a packing device. Papierfabriek Doetinchem manufactures and markets a product competing with that manufactured by Sprick.

Relying on an infringement of the rights conferred by the design, Sprick brought an action against Papierfabriek Doetinchem seeking, inter alia, the discontinuation of that infringement. Papierfabriek Doetinchem brought a counterclaim for cancellation of the design on the ground that all its features were dictated solely by their technical function.

After judgments in first instance and appeal, the German Federal Court reversed the latest judgment and referred the matter back to Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany), the referring court in the present ECJ case. One of the aspects that the referring court needed to assess was the fact that Sprick held a number of design registrations for alternative forms which pursue the same technical function as that pursued by the product created according to the design at issue in the main proceedings.

Upon reassessing the matter, the referring court acknowledges that, according to case C-395/16 (Doceram), the assessment as to whether the features of appearance of a product are dictated solely by its technical function 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, information on its use or the existence of alternative designs which fulfil the same technical function. It then raises the question, with regard to the aspect of the existence of other designs, what significance is attached to the fact that the proprietor of the design also holds design rights for numerous alternative designs?

The judgment of the ECJ

The ECJ interprets the questions as addressing whether the technical function exception of Article 8(1) of Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs must be interpreted as meaning that the assessment as to whether the features of appearance of a product are dictated solely by its technical function must be made having regard to the objective circumstances dictating the choice of features of appearance, the existence of alternative designs which fulfil the same technical function, or the fact that the proprietor of the design at issue also holds design rights for numerous alternative designs.

Upon answering this question, the ECJ reiterates its earlier findings in Doceram and concludes on that basis that the existence of alternative designs is not decisive for the application of Article 8(1) of Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs and that this “also applies where there are multiple alternative designs registered by the proprietor of the design at issue” (paragraph 22).

The ECJ then stipulates that, in order to determine whether the relevant features of the appearance of a product are covered by Article 8(1) of Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs, it is for the national court to take account of all the objective circumstances relevant to each individual case “in particular, 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” (paragraph 22).

Commentary

This judgment is somewhat mysterious.

The referring court appears to be weary of the possibility that an applicant files multiple designs, which could enable it to effectively monopolize all variants of a technical solution. In other words: it wonders whether the application of multiple designs can work at the detriment of the applicant.

The risk of monopolization of a technical solution through multiple applications has also been acknowledged by the ECJ itself, in paragraph 30 of its judgment in case C-395/16 (Doceram). However, the solution for this problem offered in that same judgment is inadequate, as the ECJ merely stipulates that the existence of other designs fulfilling the same function as such cannot justify that the design is not dictated by a technical solution (paragraph 31). In other words: the ECJ, in that judgment, stipulated that the mere existence of other possibilities as such cannot help the applicant. But the question remains: can the application of multiple designs also work at the detriment of the applicant?

In the present judgment, the ECJ, again, does not provide a clear answer to this question. However, its reference to “the reasons which dictated the choice of features of appearance of the product concerned” in paragraph 22 may provide for a solution: if a design (that is applied for registration) was merely created for the purpose of monopolizing all variants of a technical solution, then it arguably applies that “the features of appearance of a product are exclusively dictated by its technical function”, so that it cannot be registered.

This interpretation may be a bit of a stretch, but it is the best the ECJ has offered us so far to deal with the possibility that an applicant files multiple designs, which could enable it to effectively monopolize all variants of a technical solution.