Design law (design protection) protects the appearance of a product. Even if the product has no “aesthetic content”, its appearance can be protected. If, on the other hand, the shape is exclusively due to the technical function of the product, there is no Design Protection. The ECJ has now decided how to check whether an appearance feature is exclusively determined by the technical function.
DOCERAM manufactures technical ceramic elements for the automotive and machine industry. It has registered a Community design for its concrete welding centering pins. CeramTec sells identical centering pins. DOCERAM has filed an infringement suit against this with the Düsseldorf Regional Court. In its defense, CeramTec has filed an action for invalidity of the design.
The Düsseldorf Regional Court declares the Designs invalid. The Higher Regional Court recognizes that the designs have novelty and individual character, but would like to know from the ECJ how the ground for exclusion of protection of technical conditionality is to be assessed.
There are two opinions in jurisprudence and doctrine. One is that technical conditionality is already to be denied if there are design alternatives. The other states that technical conditionality exists if the technical function is the only factor that determines the appearance characteristics of the product and if aesthetic considerations are therefore completely irrelevant in product development.
The Düsseldorf Higher Regional Court also asked whether the assessment should be made from the perspective of an “objective observer” and, if so, how this should be defined.
The reference is directed to the interpretation of Article 8(1) of Regulation No 6/2002 on Community designs, which reads as follows:
“A Community design shall not subsist in features of appearance of a product which are exclusively due to its technical function.”
The ECJ first states that the term “appearance characteristics of a product which are exclusively due to its technical function” is not defined in more detail in the law. According to established jurisprudence, the term must therefore be interpreted taking into account its context and objective.
There is no criterion in the law that must be taken into account when assessing these types of appearance features. This means that it is not clear from the Regulation that the existence of alternative Designs can be the only criterion.
Furthermore, it is clear from the recitals of the Regulation that this exclusion from protection does not mean that a design must necessarily have an aesthetic content. In other words, the product does not have to have an aesthetic aspect in order to be protected. However, the ECJ points out that the appearance is the decisive feature of a design. On the one hand, the term “design” is defined as the appearance of a product resulting in particular from the features of the lines, contours, colors, shape, texture and/or Materials Science of a product or its ornamentation. On the other hand, the articles on Protectability (individual character) and the scope of protection are based on the overall impression on the informed observer.
Therefore, the CJEU concludes that design protection is excluded where the need to fulfill a technical function of the product is the only factor that motivated the designer to opt for a particular appearance feature of the product. In such a case, considerations relating to the visual appearance of the product play no role in the decision.
According to the 10th recital, the exclusion of technically conditioned features of appearance is precisely intended to prevent technical innovations from being hindered by the protection of features of appearance which are exclusively conditioned by the technical function of a product. If the existence of alternative designs which perform the same function as the product in question were sufficient to exclude the application of Art. 8 (1) of Regulation No. 6/2002, then according to the ECJ
‘it cannot be ruled out that an economic operator may register as Community designs several conceivable forms of a product which has features of appearance exclusively due to its technical function. This would allow him to benefit, in respect of such a product, from an exclusive protection from a practical point of view, which would be equivalent to patent protection, without being subject to the conditions for obtaining a Patents. Moreover, it could prevent its competitors from offering a product with certain functional characteristics or it would limit the possible technical solutions and thus render Article 8(1) of Regulation No 6/2002 ineffective.”
Design protection must therefore be excluded if only function-related technical considerations play a role in the design of the product, but no other considerations. For example, if no considerations relating to the visual appearance are relevant to the decision. This also applies if there are other designs with which the same function can be fulfilled.
The ECJ answers the second question, namely whether the assessment must be made from the perspective of an “objective observer”, by stating that there is no basis in the law for the introduction of an objective observer and that the court must therefore assess all the circumstances of the individual case. It must be based on the objective circumstances of the individual case in order to determine the motives for the choice of the appearance characteristics of the product in question. Information about its use or the existence of alternative designs that can perform the same technical function may also be taken into account, provided that there is viable evidence of these circumstances, information or alternatives.
Note: This judgment makes it easier to attack the Protectability of primarily technically used products. Whereas the design right holder was previously able to defeat an attack on the grounds of technical conditionality in many cases simply by presenting design alternatives (and such alternatives practically always exist), he must now present further reasons against technical conditionality. He must be able to show that non-technical motives also play a role in the product design decision.
Switzerland is not a member of the EU and is therefore not bound by this jurisprudence. However, it is to be expected that Switzerland’s jurisprudence will follow the ECJ ruling in the medium term in order to achieve harmonization.