Technical function determines the design: Exclusion from IP rights?

If technical functionality is the determining factor for product design, can it be protected as a Community design? Today, the ECJ decides on the appearance markers of a product, which is exclusively determined by its technical function.

Background of the case

The two opponents are both German manufacturers of engineering ceramic components. The plaintiff DOCERAM GmbH is the owner of several registered Community designs which protect pins for welding in in three different geometrical shapes. Defendant CeramTec GmbH also produces and distributes ceramic centring pins in the same variants.

DOCERAM filed an action against CeramTec at the Düsseldorf Regional Court, alleging that CeramTec had failed to violate its property rights. CeramTec GmbH filed a counterclaim for the annulment of these rights and asserted that the characteristics of the products in question are exclusively conditioned by their technical function within the meaning of Art. 8.1 of Regulation No. 6/2002. The regional court followed this assessment and declared the disputed Community designs invalid.

A “Community design” is a form of “design protection”. It is a unitary industrial design right that covers the European Union. As the protection refers to the outer design, technical products are only conditionally protectable.

DOCERAM appealed against this ruling to the Higher Regional Court of Düsseldorf. The Higher Regional Court is of the opinion that it is relevant for the main proceedings whether, in order to apply the exclusion provision of Article 8.1 of Regulation No 6/2002, it must be established that there are no design alternatives fulfilling the same technical function.

Technical function is the only factor determining the design: protectable?

Therefore, the OLG Düsseldorf presented the following questions to the ECJ, which are judged today:

Is there a protection-exclusion technical conditionality within the meaning of Art. 8.1 of Regulation No. 6/2002 even if the creative effect has no significance for the product design, but the (technical) functionality is the only factor determining the design?
Should the European Court of Justice affirm the first question: from what point of view should it be judged whether the individual design features of a product have been chosen solely on the basis of functional considerations? Is an “objective observer” decisive and if so, how should it be defined?

Clarification of theses questions is important because national judgements in the EU were not always uniform. In his conclusion, the Advocate General of the ECJ already made it clear that EUIPO had followed the theory of causality in its recent decision, even though it had once advocated the theory of diversity of forms. In other words, in recent times only features have been considered capable of protection if they improve the optical appearance of the product in any way.

In fact, the wording in Article 8.1 leaves this question open, because it states that “[t]technological innovations… must not be hindered by the fact that design protection is granted solely for technical reasons, which does not mean that a design must necessarily have an aesthetic content”. On the other hand, the regulation also clearly states that “the examination of the external appearance” is decisive for obtaining the protection as Community design.

The defendant CeramTec argues that DOCERAM, by allowing 17 design variants of a welding centring pin to be protected in three different geometrical shapes, did not allow the other market participants to use alternative designs of these products. The Advocate General emphasises that the provisions on trade mark protection are in accordance with Article 8.1 of Regulation No 6/2002 and “should prevent this protection from granting its proprietor a monopoly on the technical solutions or characteristics of a product which the user can also search for in relation to the competitor’s products”.

Advocate General stresses technical function and specific expertise

According to the Advocate General, the first question is to be answered in the affirmative: it is necessary to clarify whether the pursuit of a particular technical function is the only factor which has been decisive in the choice of the design in question and whether its designer has therefore played no creative role in this respect.

In this case, the second questionnaire is very important: how can an objective assessment be ensured?

The Advocate General made it clear that the position of an “informed user” could not be the criterion for an objective assessment, but that the application of Article 8.1 of Regulation No 6/2002 presupposes an assessment of a technical nature, which requires highly technical and specific competences. The national court dealing with the dispute may, if necessary, make the necessary assessment, drawing on the services of an independent expert appointed by it.

The national court dealing with the dispute must examine objectively and in the light of all the specific circumstances of each individual case whether the individual features of a product have been chosen solely on the basis of considerations of functionality. In view of all circumstances, however, this also means, for example,”including criteria such as the subjective intention of the designer or the existence of alternative forms in the bundle of concrete indications”. The national courts have to decide objectively on the matter by making an independent and objective assessment which took into account all relevant circumstances of the individual case.

Judgement of the ECJ confirms the arguments

In today’s judgement, the European Court of Justice has followed the Advocate General’s arguments. The ECJ also affirms the first reference question: In order to assess whether the appearance of a product is exclusively determined by its technical function, it is necessary to determine whether this function is the only factor determining these characteristics. The existence of alternative designs is not decisive in this respect.

And the second question was answered as follows: the national court had to consider all objective relevant circumstances of the individual case in order to determine whether the characteristics of a product as defined by this provision are exclusively due to its technical function. The viewpoint of an “objective observer” is not relevant in this respect.