DOCERAM v CeramTec: aesthetic v functional design protection
This CJEU decision confirms the Advocate General’s opinion that design features are not protectable by design law, if, from an objective point of view, they have been chosen solely on the basis of considerations of functionality. The CJEU confirms that the correct approach is one of “no aesthetic consideration” instead of the “multiplicity of forms” test settling a long-lasting dispute regarding the relevant standard.
Doceram is a manufacturer of technical ceramic components. It owns various registered Community designs protecting the shape of a welding pin. CeramTec also manufactures welding pins and Doceram had claimed that CeramTec’s pins infringed their design registrations. CeramTec counterclaimed that Doceram’s design registrations were solely dictated by their technical function and were therefore invalid.
Doceram appealed and in a 2016 decision, the Higher Regional Court of Düsseldorf issued a request for a preliminary ruling on the interpretation of Article 8 CDR. The court asked the CJEU the following questions:
- Are the features of appearance of a product solely dictated by its technical function, within the meaning of Article 8(1) of [Regulation No 6/2002] 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?
- 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 question of whether it is right to adopt the so called “no aesthetic consideration” approach or the “multiplicity of forms” test has been open to interpretation since the Community Design Regulation (CDR) came into effect. The debate has been centred on the interpretation of the word “solely”. The “multiplicity of forms” theory says that it is decisive if there is an alternative design possible (if there is, a design cannot be said to be “solely” dictated by its function). According to the “no-aesthetic consideration” it is decisive if only technical reasons were used to design the product. Whether or not there are existing design alternatives is, according to this theory, not decisive.
The CJEU, in line, with the Advocate General, said:
- In order to determine whether a characteristic of a product is caused exclusively by the technical function, you must determine whether this function is the only factor that determines the characteristic. It therefore confirmed that the correct standard is to adopt the so called “no aesthetic consideration” approach. The CJEU therefore rejected the “multiplicity of forms” test. The CJEU made the point that, if this were not the case, there is a danger that the Community design will achieve protection equivalent to patent protection when it is applied. An applicant could, for example, obtain various design registrations of different possible forms of products incorporating features solely dictated by technical function.
- Regarding the second question, the CJEU said that it is for the national court to determine this within the meaning of Article 8(1), taking account of the objective circumstances of each case including (but not limited to) the view of an “objective observer”.
This case emphasises that registered designs are intended to protect the aesthetic appeal of a product (as opposed to the technical appeal protected by patents).
The judgment will provide legal certainty and assist with design filing strategies but will arguably make it more difficult to counter an Art. 8(1) CDR defence. Now a claimant will need to prove that the design was not solely based on technical considerations and must rely not only on design alternatives but also on other evidence.