Insights | August 17, 2018
Judgment of CJEU on designs and features of appearance of a product which are solely dictated by its technical function
Case C-395/16 DOCERAM v CeramTech handed down this spring related to a reference for a preliminary ruling to the Court of Justice of the European Union (CJEU) on the interpretation of Article 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (Design Regulation). Article 8(1) of the Design Regulation sets out limitation of the requirements for the Community design protection and provides that such design shall not subsist in features of appearance of a product, which are solely dictated by its technical function.
DOCERAM GmbH (“DOCERAM”) is a manufacturer of technical ceramic components, particularly, centring pins for welding for which the company holds a number of registered Community designs. CeramTec Gmbh (“CeramTec”) also manufactures and sells ceramic centring pins which are similar to DOCERAM’s protected designs. DOCERAM brought an infringement claim against CeramTec, which, mutually, brought a counterclaim for a declaration of invalidity of DOCERAM’s designs. The main argument of CeramTec was that the features of appearance of DOCERAM’s products were dictated solely by their technical function within the meaning of Article 8(1) of the Design Regulation. In contrast, DOCERAM argued, in accordance with the settled view in Germany, that the Article 8(1) is not applicable, in other words, design protection may be granted if alternative designs fulfilling the same technical function exist.
The main issue before the referring court related to the meaning of the wording “features of appearance of a product which are solely dictated by its function“. And in particular, whether the existence of alternative designs is decisive in this respect. Additionally, the issue was whether the assessment of the technical functionality should be based on the perception of the “objective observer“. The Higher Regional Court of Düsseldorf referred these questions to the CJEU for a preliminary ruling.
On the question of the meaning of the wording of Article 8(1) of the Design Regulation, the CJEU stated that an autonomous and uniform interpretation must be given to the provision throughout the European Union by taking into account the context of the provision and the objectives of the legislation in question. In the absence of any definition under the Design Regulation, it does not follow that the existence of alternative designs, which fulfil the same technical function as the product concerned would be the only and decisive criterion for applying Article 8(1). Rather, the appearance is the decisive factor for granting a design protection stemming from the definition of a design under Article 3(a) of the Design Regulation.
According to the CJEU, Article 8(1) excludes from protection situations where 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 and not the visual aspect. If protection would granted also in such circumstances, designs would enjoy protection equivalent to patents without being subject to the same conditions which applies to the granting of a patent.
The CJEU considered that Article 8(1) does not require the perception of an “objective observer” to be taken into account. Rather, it is for the national court to consider all the objective circumstances relevant to each individual case. Such objective circumstances can relate, inter alia, to the design at issue, the objective circumstances indicating reasons which dictated the choice of features of appearance of the product concerned, or information on its use. Additionally, the existence of alternative designs fulfilling the same technical function can be considered, provided that the existence of alternative designs is supported by a reliable evidence.
Based on the CJEU decision discussed above, the existence of alternative designs is not the only factor to be considered in the assessment whether a particular design is solely dictated by its technical function. Rather, in order to determine whether the relevant features of appearance of a product are solely dictated by its technical function, the national court must take into account all the objective circumstances relevant to each individual case and there is no need to base those findings on the perception of an “objective observer“.