In its recent judgment C-395/16 of 8 March 2018, DOCERAM vs. CeramTec, the Court of Justice addressed the controversial issue of the bar against registering a shape dictated solely by its technical function as a Community design. Article 8(1) of Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community Designs (CDR) sets out this bar to registration in those terms. As stated in Recital 10 of that Regulation, its purpose is to prevent the grant of exclusive rights to the owner of an industrial design from interfering with technological innovation.

However, to date, interpretation of that Article by the national courts and by the EUIPO has not been uniform. Basically, two different approaches have coexisted side by side.

  1. On the one hand, there is the so-called multiplicity of forms approach, which holds that if there are different alternative forms of an object performing the same technical function, the design in question cannot be regarded as being dictated solely by its function. This criterion has been followed by the courts of various countries, France, Germany, and Spain among them.
  2. In recent decisions, however, the EUIPO has taken a different approach, which holds that what needs to be examined is whether the designer selected the design features based solely on their functionality or based on other considerations as well. Furthermore, this point is to be assessed from the standpoint of a reasonable, objective observer.

To date the CJEU has not had occasion to issue any ruling on this subject. The occasion has now arisen subsequent to a request for a preliminary ruling submitted by the Oberlandesgericht Düsseldorf in proceedings between the German companies DOCERAM GmbH and CeramTec GmbH. The former company owns several Community design registrations covering the shape of ceramic centring pins used with welding machines to hold the pieces to be welded in position.

In response to infringement proceedings brought based on those registrations, CeramTec GmbH counterclaimed seeking a declaration of invalidity on grounds that the designs were barred under Article 8(1) CDR. The counterclaim was successful, and DOCERAM appealed, contending that there were other, alternative forms that fulfil the same technical function for the product in question. At that point, the Düsseldorf court referred its questions to the CJEU for a preliminary ruling as to which criterion should be employed in assessing the bar to registration.

It turns out that the Court of Justice has rejected the multiplicity of forms doctrine. In its view, it does not follow either from Article 8(1) of the CDR or from any other provision of the Regulation that multiplicity of forms is the only criterion for determining application of the Article. Following the Advocate General’s opinion, the Court further ruled that applying this criterion would enable an operator who has registered various alternative forms fulfilling the same technical function to obtain, in practice, exclusive protection equivalent to patent protection without having to meet the requirements of a patent.

Therefore, the CJEU has taken the alternative approach, holding that what has to be considered is whether, when choosing the features of appearance of a product, considerations other than the need for it to fulfil its technical function, in particular those related to its visual aspect, have been taken into account. Thus, the Court concluded that for the bar to registration in Article 8(1) CDR to apply, a product’s technical function must be the only factor that has determined the features of the product’s appearance, the existence of other, alternative designs being irrelevant in that connection.

On the other hand, in its reply to the second question raised by the Oberlandesgericht Düsseldorf, the Court ruled that assessment of that point does not have to be based on the perception of an “objective observer”.

Instead, again following the opinion of the Advocate General, the Court has held that, in their assessments, the national courts need not base their findings on the perception of an “objective observer” but must take account of all the circumstances relevant to the case. The factors to be taken into account include, in particular, the design in question, the objective circumstances informing the choice of the features of appearance of the product, information on its use, and even the existence of alternative designs that fulfil the same technical function.

Clearly, the criteria set by the Court of Justice in this judgment do not particularly simplify the work of the national courts. This question of technical function will doubtless continue to be a significant source of controversy in proceedings dealing with the infringement and invalidity of industrial designs.

  Author: Carlos Morán

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