On 8 March 2018, the CJEU issued a preliminary ruling in a case that had been referred by the Higher Regional Court of Düsseldorf, Germany.

The decision concerns Article 8 (1) of Regulation No 6/2002 which excludes the features of appearance of a product from protection which are solely dictated by its technical function. If all features are technically dictated, the design in question is invalid.

The plaintiff, DOCERAM GmbH (“DOCERAM”), brought an action against CeramTec GmbH (“CeramTec”) based on a number of registered Community designs which protect centring pins for welding. CeramTec brought a counter-claim for a declaration of invalidity of the designs, one of its arguments being that the features of appearance of the products in question were dictated solely by their technical function.

In first instance, the action brought by DOCERAM was dismissed and the Regional Court of Düsseldorf declared the designs at issue to be invalid according to Article 8 (1). In the appeal instance, the case was referred to the CJEU.

The questions of the Higher Regional Court were:

(1)     Are the features of appearance of a product solely dictated by its technical function, within the meaning of Article 8(1) of [Regulation No 6/2002] which excludes protection, also if the design effect is of no significance for the product design, but the (technical) functionality is the sole factor that dictates the design?

(2)      If the Court answers Question 1 in the affirmative:

From which point of view is it to be assessed whether the individual features of appearance of a product have been chosen solely on the basis of considerations of functionality? Is an “objective observer” required and, if so, how is such an observer to be defined?

The General Court’s decision

The court considered the appearance of a product to be the decisive factor for a design, despite the fact that it is not essential to have an aesthetic aspect for design protection.

Article 8 (1) needed to be interpreted in a way that 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 other considerations, in particular related to the visual appearance having “not played a role in the choice of that feature”, the respective designs were excluded from design protection.

The approach of German and other courts to view the existence of alternative designs as being solely relevant, was rejected in line with our argument that this could – through multiple registrations – lead to an “exclusive protection which is, in practice, equivalent to that offered by a patent, but without being subject to the conditions applicable for obtaining the latter”.

Further, the court ruled that whether or not the features of appearance of products were only determined by technical functions, had to be decided based on objective circumstances supported by reliable evidence. One of these circumstances (but not the only one!) might be the existence of alternative designs which fulfil the same technical function.

The court decided:

1. Article 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs must be interpreted as meaning that in order to determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard.
2. Article 8(1) of Regulation No 6/2002 must be interpreted as meaning that, in order to determine whether the relevant features of appearance of a product are solely dictated by its technical function, within the meaning of that provision, the national court must take account of all the objective circumstances relevant to each individual case. In that regard, there is no need to base those findings on the perception of an ‘objective observer’.

CeramTec was represented by Hogan Lovells in these proceedings.