European Court provides colourful insight into design law

In its decision C‑684/21 of 2 March 2023, the European Court of Justice gives interesting new guidance into how to interpret the exclusion of design protection for features of a product that are solely dictated by its technical function and how to assess the appearance “as registered” of a design registration.

Relevant facts

Sprick, a company manufacturing packing-paper dispensers, is the proprietor of Registered Community Design 001344022-0006 for a packing device (“RCD”). Based on this RCD, it started infringement proceedings against competitor Papierfabriek Doetinchem. In these proceedings, Papierfabriek Doetinchem raises the invalidity of the RCD, claiming that all features of appearance of the product in the RCD are dictated solely by the product’s technical function.[1]

The Regional Court of Düsseldorf upheld the RCD given the existence of “numerous design alternatives” for that product. Therefore, the features of the product could not be solely dictated by its technical function and the court upheld the validity of the RCD.

However, following Papierfabriek Doetinchem’s appeal, the Higher Regional Court of Düsseldorf found the existence of ‘viable design alternatives’ irrelevant and decided to declare the RCD invalid on the basis of Sprick’s patent EP 2 897 793[2] and the technical advantages of the product’s features explained therein.

On further appeal (cassation), the German Federal Court disagreed with the previous decision and stated that all relevant aspects of the case should be taken into account, and thus not only the patent, but for instance the fact that Sprick also held a number of RCDs for alternative forms of design for the same technical function as the function pursued by the product protected by the RCD (cf. case C‑395/16 “DOCERAM”). The court continued that it must be assessed whether visual considerations had not also played a role in the choice to configure the product as consisting of two components, what makes a two-colour appearance of the product possible.

The German Federal Court therefore sent the case back to the Higher Regional Court of Düsseldorf for reconsideration. This court then decided to stay the proceedings and raise a number of questions[3] directly to the European court of Justice (“ECJ”).

 

Decision of the ECJ

In its recent decision, the ECJ starts with confirming that the assessment as to whether the features of appearance of a product are dictated solely by its technical function, must be made having regard to all of the objective circumstances relevant to each case, inter alia the circumstances that dictate the choice of features of appearance such as:

• the existence of alternative designs which fulfil the same technical function; and
• the fact that the proprietor of the RCD in question also holds design rights for numerous alternative designs.

This last point was however not considered decisive. The existence of alternative designs fulfilling the same function is not in itself sufficient to grant design protection. Otherwise, anyone could receive community design protection for every technical alternative, and thus prevent others from using designs which only incorporate a technical function.

The Court continues that visual considerations, such as a design consisting of two components allowing for the multicolour appearance of a product, may, in principle, be taken into account in the overall assessment. However, the ECJ stated that this fact cannot be taken into account when that multicolour appearance is not apparent from the registration of the RCD. The mere possibility of a multicolour appearance is not sufficient as such, if it is not apparent in the representation of the design. Otherwise, this would result in the unsustainable situation where the EUIPO is not able to determine the scope of the registration, i.e. if non-visible elements were to be taken into account.

Conclusion

With its decision, the ECJ sticks to its established case law (e.g. case C‑395/16 “DOCERAM”), whereby it emphasises the importance of the design appearance “as represented in the registration”, and applies that to designs that lend themselves to a different (multi-)coloured look. A design may be created in a way that different colours can be applied. In some cases, it may therefore be better to apply for a multicoloured design in the first place.

 

CAPE IP Law

13 April 2023

 

[1] See article 8(1) Regulation (EC) No 6/2002 of 12 December 2001 on Community designs

[2] This European patent claims priority from a German patent dd. 19 September 2012, which is exactly the same date that Sprick – not coincidently – applied for the RCD.

[3] (i) What significance is attached to the fact that the proprietor of the design also holds design rights for numerous alternative designs , (ii) whether it is necessary – in examining the alleged technical function – to take into account that the design allows for a multicolour appearance in the case where the colour design is not, as such, apparent from the registration and (iii) whether this would affect the scope of protection of the design.