On March 8 2018, the European Court of Justice decided on
the preliminary questions posed by the Oberlandesgericht in
Düsseldorf regarding the appearance of a design determined
by technical function ((C-395/16) DOCERAM v
DOCERAM produces parts of technical ceramics for its clients
in the machine and plant construction industries. It has
protected its centring pins, in three different geometric
forms, each with six different types, as a community design.
CeramTec produces similar products. DOCERAM sued CeramTec for
infringement. CeramTec defended itself by requesting the
nullification of the design registrations because it believes
the external characteristics of the products are solely
determined by their technical function.
After the registrations had been declared null and void in
the first instance, the judge handling the appeal pointed out
that the external characteristics of a product are generally of
no importance to the relevant professional public. This gave
him reason to question whether protection should extend to
components that are invisible once they have been put in place.
He asked the court's decision on the following questions:
1. Does a technical function preclude
protection within the meaning of Article 8(1) of Council
Regulation (EC) No 6/2002 of December 12 2001 on Community
designs (OJ 2002 L 3, p1) 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 should it be considered
whether the individual design features 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?
In the court's opinion, it does not appear from the
Regulation that the fact that there are alternative designs
with which the same technical function can be fulfilled, is the
only criterion for determining whether Article 8 paragraph 1
applies. If such were to be assumed, an entrepreneur could
register several forms of a product with only a technically
determined appearance as a Community design with the aim of
obtaining the exclusive protection that is only provided by
patents. Furthermore an undesirable consequence would be that
competitors are unable to offer products with certain
functionalities and/or that fewer technical solutions are
possible. For the purpose of assessing whether the external
characteristics of a product are exclusively determined by the
technical function, it must therefore be ascertained whether
that function is the only decisive factor. In this respect, it
is not decisive that there are other designs.
According to the court, the answer to the second question
must be that the assessment must take into account all the
relevant objective circumstances of the specific case. The
perception of the objective observer is not important.
|Annelies de Bosch Kemper
Carnegieplein 5, 2517 KJ
Tel: +31 70 416 67 11
Fax: +31 70 416 67 99