Form follows function: no design protection if technicality is only determining factor, says Court of Justice

According to EU design law, no
design protection may be granted to features of appearance of a product that
are solely dictated by technical function. The appropriate interpretation of
this exclusion ground has been the subject of heated debate over the years.
This heat has now been quelled by the Court of Justice of the European Union
(CJEU), which issued a preliminary ruling on this subject in the case Doceram
v. CeramTec (C-395/16) on 8 March 2018. The CJEU holds that the
technical exclusion ground applies if the technical function was the only
factor that determined the choice of design. Hereby, it is insufficient to
prove that this technical function could have also been achieved by another
design.

Validity conditions

In order to be valid, a registered EU design (RCD)
must be new and have an individual character, as set forth in the Community Design Regulation (Article 4, §1 CDR).

A registered design is considered new if no identical
design (read: no design the features of which differ only in immaterial
details) has been made available to the public before the application date of
said registered design or, if applicable, its priority date (Article 5 CDR).

The requirement of individual character implies that
the overall impression conveyed by the registered design on the informed user
has to differ from designs that have already been made available to the public
(Article 6 CDR).

Technicality exclusion

Moreover, an RCD cannot subsist in features of
appearance of a product which are solely dictated by its technical function
(Article 8, §1 CDR).

Such features may not be taken into account in the
assessment of novelty and/or individual character. The reason for this
exclusion is that the legislator believes that purely technical solutions
should only be protectable by patents.

Over the years, there has been a significant amount of
discussion in legal doctrine and case law as to the appropriate interpretation
of this exclusion ground based on technical function. Indeed, the line between
a technical result and a creative design element is often difficult to draw.
Overall, two lines of thought may be distinguished:

• First,
  the multiplicity of forms test is to
  ask whether the technical function can be achieved by any other configuration.
  If this is the case, the exception does not apply. Under this test, only very
  few designs are held invalid on grounds of technicality: indeed, in most
  instances, there will be at least one other way of achieving the technical
  result.
• The
  second test is the causality test,
  according to which the technicality exclusion should cover all the external
  characteristics of a design that were only chosen for functional reasons,
  without any consideration for ‘how it looks’. Characteristics that were chosen,
  at least to some extent, in order to improve the product’s appearance, remain
  susceptible to protection under design law. This test is stricter than the
  first test, to the extent that it might lead to the invalidity of more designs.

Traditionally, the EUIPO and
national courts applied the multiplicity of forms test. However, since the
EUIPO decision in the so-called ‘Chaff Cutters’ case in 2009, legal doctrine
has strongly advocated the need to switch to the causality test. However, as
long as the CJEU did not have the opportunity to rule on the appropriate
interpretation of the exclusion ground, a degree of uncertainty remained.

CJEU decision in Doceram
v. CeramTec

On 8 March 2018, the CJEU did
away with this uncertainty in its relatively short decision in Doceram v. CeramTec (C-395/16).

This case relates to the
validity of designs registered for centring pins for welding. Both Doceram and CeramTec
manufacture and sell such centring pins. Doceram, having registered a number of
designs for the shape of their products at the EU level, brought an
infringement claim against CeramTec before the German courts. CeramTec’s
argument that the designs at issue were invalid on the basis of the
technicality exclusion was accepted by the first instance court. However, on
appeal, the Oberlandesgericht Düsseldorf was less sure of this and referred a
number of questions to the CJEU regarding the appropriate scope of the
technical exclusion ground.

In his Opinion delivered on 19 October 2017, Advocate
General Saugmandsgaard Øe subscribed to the causality test and expressly
rejected the applicability of the multiplicity of forms test. The CJEU
confirmed the AG’s view in its judgment of 8 March 2018. According to the CJEU,
the technical exclusion ground applies if the technical function is the only factor that determined the choice of
design and the designer did not play any creative role.

The mere fact that there are
alternative designs that fulfil the same function as that of the product
concerned does not lead to the possibility of design protection. Otherwise, says
the CJEU , this would enable a form of exclusive protection that is in practice
equivalent to that of a patent, but without the attached validity conditions. This
does not mean that a design has to have any aesthetic value in order to be
valid.

The next question is who will
assess all of this. The answer, according to the CJEU, is that the competent
court should make an objective assessment, relying on all relevant objective
circumstances that are supported by reliable evidence. This implies that the
subjective intention of the designer will not be conclusive. However, the CJEU
does not give guidance on what kind of evidence will be decisive in this regard. In any case, the criterion applied
for the assessment of the novelty and individual character of the design, the
so-called ‘informed user’, will not apply, nor will the perception of an
‘objective observer’ be of significance.

Conclusion

It is
now up to the Higher Regional Court of Düsseldorf to decide whether or not the
form of Doceram’s centring
pins merely follows their function in the sense of the criterion set by the
CJEU. Given the lack of clarification by the CJEU as to which
‘objective circumstances’ will be decisive in this regard, this task will not
be without complication.

In any case, the CJEU’s decision shifts the balance slightly in favour
of the alleged infringer and will, to some extent, make the lives of design
owners more difficult. However, the burden of proof that a certain feature is purely functional still
largely rests with the party asserting the invalidity of the registered design.
Moreover, as design law authority David Stone argues, “it will be rare for an entire design to be invalidated on the basis
that each and every feature of appearance is solely dictated by technical
function.”¹

¹ D. STONE, European Union Design Law. A Practitioner’s
Guide. Second Edition, Oxford (UK), Oxford University Press, 2016, p.
86-87.