Düsseldorf Higher Regional Court asks CJEU regarding the role of alternative designs in establishing functionality

While this Kat was inquiring about the role of alternative designs in examination of Art. 8(1) Regulation 6/2002, the Düsseldorf Higher Regional Court (OLG Düsseldorf) sent a referral to the CJEU on just this issue (C-684/21). The case goes as follows.

The claimant in the national case, Papierfabriek Doetinchem, is the owner of Community Design No 001344022-0006 for a “packaging device” i.e., a holder for paper rolls (see the image to the right). The claimant filed an infringement suit against a competitor, Sprick GmbH & Ho, in the Düsseldorf District court (LG Düsseldorf). The competitor, filed a counterclaim, seeking a declaration that the claimant’s Community design was invalid, on the ground that it is dictated by its technical function per Art. 8(1) Regulation 6/2002.

LG Düsseldorf dismissed the counterclaim, holding that the existence of numerous design alternatives proved that its appearance was not dictated by its technical function (using one of the two approaches that are usually applied to examine Art. 8(1)). In turn, OLG Düsseldorf upheld the defendant’s claim, invalidated the design and dismissed the infringement claim (20 U 98/17). Sprick Gmbh & Ho appealed to the Federal Court of Justice. The Federal Court of Justice found that the second instance court had erred in law when considering the claims, and it thus remanded the case to the OLG Düsseldorf (I ZR 137/19).

One of the two questions at issue in the case was the role that patent documentation plays in establishing the technical functionality of the features of a design. In addition to its design rights, Papierfabriek Doetinchem also holds a patent for an “apparatus for manually generating a spiral packaging material”. The patent drawings are virtually identical to the drawings, filed in connection with the application for design protection. OLG Düsseldorf considered this sufficient proof that the appearance of the design was dictated by its technical function.

The Federal Court of Justice rejected this conclusion. It stated that while OLG Düsseldorf was right to consider the patent documentation, it accorded it too much weight in reaching its result. The patent claims, descriptions and drawings are only one set of the objective circumstances to be taken into account, inasmuch a patent application does not focus on a product’s visual appearance. A similar approach is suggested in the EUIPO’s Guidelines.

The second question concerned the existence of alternative designs as a factor in examining whether the design’s features are solely dictated by its technical function. In the Doceram decision, the CJEU had ruled that the existence of alternative designs is one of the objective circumstances to be considered in analysing validity. Still, OLG Düsseldorf reckoned that the existence of viable alternatives was not indicative of validity in this case, because Papierfabriek Doetinchem had also registered numerous alternative designs for the paper device. In effect it had received patent-like protection through design law. This, in the opinion of OLG Düsseldorf, indicated that the appearance of the design had been chosen due to its technical function.

The Federal Court of Justice disagreed with this interpretation both of Regulation 6/2002 and the Doceram decision, stating that it is irrelevant whether Papierfabriek Doetinchem had claimed design protection for those alternative designs. The Federal Court of Justice declined to request a preliminary ruling on the issue, and instead returned the case to OLG Düsseldorf for reconsideration.

In turn, OLG Düsseldorf, in addressing the case for the second time, decided to stay the proceedings, and referred to the CJEU the following question:

According to the case-law of the [CJEU], the assessment as to whether the features of appearance of a product are dictated exclusively by its technical function must be made having regard to the design at issue, the objective circumstances indicative of the reasons which dictated the choice of features of appearance of the product concerned, information on its use or the existence of alternative designs which fulfil the same technical function [as established in Doceram]. With regard to the aspect of the existence of other designs, what significance is attached to the fact that the proprietor of the design also holds design rights for numerous alternative designs? 

In light of Doceram (where the CJEU explicitly raised its concerns over patent-like protection through multiple alternative designs), this Kat would expect the CJEU to support the approach, adopted by OLG Düsseldorf.