A design determined by product function
Designs of products or parts of products are protected if they are new and the overall impression they make differs from designs know to the public up until that time. Certain features, determined solely by the technical function of the product, are not protected (see article on our website). Until now there were various interpretations as to what in fact determines that a particular feature is solely a result of the product function. The issue was clarified in a recent CJEU judgment.
Judgment of 8 March 2018, case C‑395/16
To date it was not clear how to demonstrate that a design is not determined solely by technical function. Is it sufficient to devise an alternative form for the design feature being examined (the criterion of multiplicity of forms) or does it also have to be ascertained that the creator of the design was influenced by considerations other than functionality, for example aesthetic quality, when selecting the feature in question?
Request for a preliminary ruling
The CJEU ruled on this interpretational discrepancy in case C-395/16. The CJEU judgment was a preliminary ruling on a query referred by the Oberlandesgericht Düsseldorf in a dispute between Doceram GmbH and CeramTec GmbH on infringement of Community designs. The key issue referred by the German court was how to interpret Article 8(1) of Regulation 6/2002 on Community designs, which states that a Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function. The CJEU looked at what needs to be assessed in order for this rule to apply. Specifically, it examined whether the existence of alternative designs is the deciding factor for features of appearance of a product not to be found to be dictated solely by its technical function, or whether, in addition, the technical function should be determined not to be the sole factor dictating the feature in question.
Ruling
The regulation does not define the term “features of appearance of a product which are solely dictated by its technical function”. It also does not state that the existence of alternative designs enabling achievement of the same technical function as that of the product being examined is the sole criterion for the exclusion in question to apply.
When interpreting Art. 8(1) of the regulation, the CJEU referred to the recitals, stating that it does not have to be possible for a product design to be examined from an aesthetic viewpoint for a design to enjoy protection. It also found that the objective of the exclusion in question was to prevent protection of designs stopping development of innovation due to protection being afforded features which are dictated by the function of the product.
The CJEU emphasised that if the mere existence of alternative designs enabling the same function to be achieved was sufficient for the exclusion not to be applicable, it would not be impossible for an undertaking to register multiple forms determined solely by a product’s technical function, as a Community design. That undertaking would have a means of blocking competitors, using protection identical to a patent without being subject to the restrictions that apply when obtaining a patent. The CJEU stated that this would limit the potential technical solutions and render Art. 8(1) of the regulation ineffective (effet utile).
The CJEU found therefore that the provision in question should be interpreted as stating that to determine whether features of appearance of a product are solely dictated by its technical function, it needs to be ascertained whether that function is the sole factor defining those features. At the same time, existence of alternative designs is not the deciding factor. Protection is excluded when considerations other than the requirement for the product in question to fulfil a function, in particular the visual aspect, do not affect selection of the features described, even when there are other designs which enable the same function to be achieved.
Summary
This CJEU judgment was an adjudication of the dispute over interpretation of the exclusion from protection of product design features dictated solely by a product’s technical function. Citing the objectives of the regulation, the CJEU stated that the factor determining a particular feature should be examined. The mere existence of alternative forms is not sufficient to grant the rightholder a monopoly resulting from registration of a design. The authority examining the design in question in light of Art. 8(1) of the regulation therefore has to determine whether the feature in question was dictated solely by the product’s intended function or whether there were also other reasons for it being formed in a particular way.
Paulina Piekut, Intellectual Property practice, Wardyński & Partners
