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Doceram – clarity or confusion on functional designs?

Date: 14 May 2018

By David Musker

 

The CJEU decision in the reference in Case C-395/16 Doceram v Ceramtech (ceramic weld-centering pins) was intended to determine how to assess whether a design is excluded as functional.  Instead, it clarifies how not to do so, whilst leaving considerable leeway to the national EU courts.

 

The present case concerned the design of a ceramic weld-centering pin registered in 2004, in several variants, as RCD 242730-0001 to -0017 by Doceram, a German company making technical ceramics.  According to their literature it “enables optimal centering of the welding nut over the sheet hole”. Doceram sued Ceramtec, a competitor, who counterclaimed for invalidation, in the District Court (LG) of Düsseldorf.

 

On appeal (I-20 U 124/15 (Schweisszentrierstiften-Doceram) the Higher Regional Court of Düsseldorf reviewed the contradictory case law and decided to refer the issue to the Court of Justice of the EU. The European Commission and the Greek and United Kingdom Governments joined the action.

 

Background – the “Multiplicity of Forms” test for functional features

 

National and EU-level design law in Europe exclude protection for features of a design which are “solely dictated” by the technical function of the product to which the design is applied.  However, the case law has been divided on the appropriate test to apply:

 

  1. Under the former UK law, the House of Lords had held (in Amp v Utilux) that a design was invalid where the designer was concerned only with technical function and not with the visual appeal of the product;
  2. In a trade mark case (C-299/99 Philips v Remington), an EU Advocate-General made an obiter comment that the exclusion to be applied to designs should be narrower than that used for trade marks, and that the exclusion should only apply where a design could be made only in a single shape.  This is often called the “multiplicity-of-forms” approach – where a product can be made in multiple forms, any of the corresponding designs is registrable.  Some EU courts have since then followed this approach;
  3. In a later design case (R 690/2007-3 Lindner v Fransson (Chaff Cutters)), an EUIPO Board of Appeal held that this was incorrect, and that the exclusion applied when “aesthetic considerations are completely irrelevant”.  However, this was not to be assessed by the designer’s actual intention (in that case, the designer had – rather implausibly - given evidence that he was concerned about aesthetics) but to be assessed from the standpoint of an undefined “reasonable observer”.  This judgment was often applied at EUIPO, and by some national courts;
  4. The EUIPO Board of Appeal in a different constitution (R2081/2011-3, Pallet, R2869/2014-3 Flower boxes, R2098/2014-3, Saws (machines)) subsequently applied the test whether “design freedom” was absent, ignoring the question of aesthetics.

 

One of the criticisms made of the “multiplicity-of-forms” approach which led to its rejection at EUIPO is that if a limited number of shapes are possible, an applicant might seek to register them all and thus monopolise the function of the product by way of its design portfolio.  In the present case, by registering 17 somewhat similar variant designs, Doceram laid themselves open to this accusation by the defendant Ceramtec.

 

Defendants proposed an alternative test

 

Ceramtec therefore proposed that the Court should instead use the “reasonable observer” test, with that person being the “informed user” of EU case law (a non-expert), taking account of:

 

  • the specific objective of the manufacturer at the time of design,
  • advertising of the product which focuses on accentuating the design,
  • whether all the conceivable alternative appearances would result in a different or lesser technical functionality,
  • any distinction or particular reputation of the design among the relevant public, and
  • the designer’s intention on the creation of the product.

 

The Court’s decision first deals with the need, or otherwise, for aesthetics in a design. They held that “it is not essential for the appearance of the product in question to have an aesthetic aspect to be protected”. That is a clear and important finding, which will require most national courts (and the EUIPO) to reconsider their approach to the benefit of applicants.  However, technical considerations alone do not make a design; a design is invalid unless “considerations of another nature, in particular those related to its visual aspect, have not played a role in the choice”.

 

They then conclude that “the existence of alternative designs” – the multiplicity of forms approach – is not decisive, and that the analysis “does not require the perception of an ‘objective observer’ to be taken into account”.

 

The court or tribunal judging a design case must “take account of all the objective circumstances relevant to each individual case”.  These include:

 

  • the design at issue,
  • the objective circumstances indicative of the reasons which dictated the choice of features of appearance of the product concerned,
  • or information on its use,
  • or the existence of alternative designs which fulfil the same technical function, provided that those circumstances, data, or information as to the existence of alternative designs are supported by reliable evidence.

 

Comment

 

Where does this restrained judgment leave applicants?  Common sense suggests that consumer products (unlike the weld centring pins in this case) will almost always be chosen somewhat for their visual aspect, and will almost always have alternative shapes. See for example the Philips Air Fryer case discussed in this newsletter.

 

Industrial products are also often designed for visual aspect as well as function, and in ruling out the need for aesthetics, this judgment also keeps the door open for registration of such products (at least at EUIPO, where the issue is not examined before registration).

 

Designs which, although highly technical, succeed in the market against technically equivalent competitors because of their visual aspect should be entitled to protection.

 

 

 

 

 

 

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