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CJEU gets technical in design law referral

Verity Ellis
14/03/2018
Following an opinion by the Advocate General on 19 October 2017 in Doceram v CeramTec, the CJEU has now issued its answers to questions referred by the Düsseldorf Court relating to Article 8(1) of the Community Designs Regulation No 6/2002.

Following an opinion by the Advocate General on 19 October 2017 in DOCERAM v CeramTec, the CJEU has now issued its answers to questions referred by the Düsseldorf Court relating to Article 8(1) of the Community Designs Regulation No 6/2002 ("the Regulation").

Article 8(1) of the Regulation states that a Community design does not subsist in features of appearance of a product which are solely dictated by its technical function. This provision has caused increasing difficulty in the national courts, as despite appearing in EU law, there is no supporting criteria setting out exactly what is meant by the concept "solely dictated".

Background

In the ruling, the CJEU recognised that there are differing approaches to Article 8(1) in the case law and commentary. The position was neatly summarised as follows:

One approach is that the sole criterion for the application of Article 8(1) of [the Regulation] is the existence of alternative designs which fulfil the same technical function, which demonstrates that the design at issue is not dictated solely by reason of its technical function within the meaning of that provision. The opposing view is that that provision is applicable where the various features of appearance of the product are dictated solely by the need to achieve a technical solution and that the aesthetic considerations are entirely irrelevant. In that case there is no creative effort worthy of protection as a design.

The Questions

The Düsseldorf Court asked the CJEU the following questions:

  1. Are the features of appearance of a product solely dictated by its technical function, within the meaning of Article 8(1) of the Regulation 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 Answers

In relation to the first question, the CJEU held that for Article 8(1) to apply it must be established that the technical function is the only factor which determines the features of appearance of the product. The CJEU held that design alternatives are not the only criteria in determining whether the characteristics of a product fall within the scope of Article 8(1). Other supporting evidence is also required.

The CJEU agreed with the earlier opinion of the Advocate General in that if the existence of alternative designs was sufficient to exclude the application of Article 8(1), it would be possible to gain Community design protection for a product incorporating features which were exclusively dictated by technical function. This would hamper innovation, as it would prevent competitors using those functional features and effectively offer protection akin to patent rights, but without being subject to the patent registerability conditions.

Secondly, the concept of the "objective observer" was rejected by the CJEU. It was held that national courts should assess the individual features of appearance of a product by considering all objective circumstances relevant to each individual case. In line with the answer to Question 1, the existence of design alternatives can be taken into account, however this alone would not be conclusive.

Comment

Given that the questions were referred in May 2016, these answers were eagerly awaited by the IP community. As with any CJEU judgment, the implementation by national courts is where the true impact will be seen. That said it already seems that it may now be harder to demonstrate that a design was not solely based on technical considerations. It is clear that simply showing that other design alternatives exist will not be sufficient, but exactly what additional evidence will be required to get over the Article 8(1) hurdle remains undefined.

 

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