The CJEU’s decision shifts the balance slightly in favour of the alleged infringer and will, to some extent, make the lives of design owners more difficult.
However, the burden of proof that a certain feature is purely functional still largely rests with the party asserting the invalidity of the registered design.
According to EU design law, no design protection may be granted to features of appearance of a product that are solely dictated by technical function. The appropriate interpretation of this exclusion ground has been the subject of heated debate over the years. This heat has now been quelled by the Court of Justice of the European Union (CJEU), which issued a preliminary ruling on this subject in the case Doceram v. CeramTec (C-395/16) on 8 March 2018. The CJEU holds that the technical exclusion ground applies if the technical function was the only factor that determined the choice of design. Hereby, it is insufficient to prove that this technical function could have also been achieved by another design.
In order to be valid, a registered EU design (RCD) must be new and have an individual character, as set forth in the Community Design Regulation (Article 4, §1 CDR).
A registered design is considered new if no identical design (read: no design the features of which differ only in immaterial details) has been made available to the public before the application date of said registered design or, if applicable, its priority date (Article 5 CDR).
The requirement of individual character implies that the overall impression conveyed by the registered design on the informed user has to differ from designs that have already been made available to the public (Article 6 CDR).
Moreover, an RCD cannot subsist in features of appearance of a product which are solely dictated by its technical function (Article 8, §1 CDR).
Such features may not be taken into account in the assessment of novelty and/or individual character. The reason for this exclusion is that the legislator believes that purely technical solutions should only be protectable by patents.
Over the years, there has been a significant amount of discussion in legal doctrine and case law as to the appropriate interpretation of this exclusion ground based on technical function. Indeed, the line between a technical result and a creative design element is often difficult to draw. Overall, two lines of thought may be distinguished:
- First, the multiplicity of forms test is to ask whether the technical function can be achieved by any other configuration. If this is the case, the exception does not apply. Under this test, only very few designs are held invalid on grounds of technicality: indeed, in most instances, there will be at least one other way of achieving the technical result.
- The second test is the causality test, according to which the technicality exclusion should cover all the external characteristics of a design that were only chosen for functional reasons, without any consideration for ‘how it looks’. Characteristics that were chosen, at least to some extent, in order to improve the product’s appearance, remain susceptible to protection under design law. This test is stricter than the first test, to the extent that it might lead to the invalidity of more designs.
Traditionally, the EUIPO and national courts applied the multiplicity of forms test. However, since the EUIPO decision in the so-called ‘Chaff Cutters’ case in 2009, legal doctrine has strongly advocated the need to switch to the causality test. However, as long as the CJEU did not have the opportunity to rule on the appropriate interpretation of the exclusion ground, a degree of uncertainty remained.
CJEU decision in Doceram v. CeramTec
On 8 March 2018, the CJEU did away with this uncertainty in its relatively short decision in Doceram v. CeramTec (C-395/16).
This case relates to the validity of designs registered for centring pins for welding. Both Doceram and CeramTec manufacture and sell such centring pins. Doceram, having registered a number of designs for the shape of their products at the EU level, brought an infringement claim against CeramTec before the German courts. CeramTec’s argument that the designs at issue were invalid on the basis of the technicality exclusion was accepted by the first instance court. However, on appeal, the Oberlandesgericht Düsseldorf was less sure of this and referred a number of questions to the CJEU regarding the appropriate scope of the technical exclusion ground.
In his Opinion delivered on 19 October 2017, Advocate General Saugmandsgaard Øe subscribed to the causality test and expressly rejected the applicability of the multiplicity of forms test. The CJEU confirmed the AG’s view in its judgment of 8 March 2018. According to the CJEU, the technical exclusion ground applies if the technical function is the only factor that determined the choice of design and the designer did not play any creative role.
The mere fact that there are alternative designs that fulfil the same function as that of the product concerned does not lead to the possibility of design protection. Otherwise, says the CJEU , this would enable a form of exclusive protection that is in practice equivalent to that of a patent, but without the attached validity conditions. This does not mean that a design has to have any aesthetic value in order to be valid.
The next question is who will assess all of this. The answer, according to the CJEU, is that the competent court should make an objective assessment, relying on all relevant objective circumstances that are supported by reliable evidence. This implies that the subjective intention of the designer will not be conclusive. However, the CJEU does not give guidance on what kind of evidence will be decisive in this regard. In any case, the criterion applied for the assessment of the novelty and individual character of the design, the so-called ‘informed user’, will not apply, nor will the perception of an ‘objective observer’ be of significance.
It is now up to the Higher Regional Court of Düsseldorf to decide whether or not the form of Doceram’s centring pins merely follows their function in the sense of the criterion set by the CJEU. Given the lack of clarification by the CJEU as to which ‘objective circumstances’ will be decisive in this regard, this task will not be without complication.
In any case, the CJEU’s decision shifts the balance slightly in favour of the alleged infringer and will, to some extent, make the lives of design owners more difficult. However, the burden of proof that a certain feature is purely functional still largely rests with the party asserting the invalidity of the registered design. Moreover, as design law authority David Stone argues, “it will be rare for an entire design to be invalidated on the basis that each and every feature of appearance is solely dictated by technical function.”1
1 D. STONE, European Union Design Law. A Practitioner’s Guide. Second Edition, Oxford (UK), Oxford University Press, 2016, p. 86-87.