When is a design dictated by its technical function?

Designs are meant to protect the appearance of a product or a part thereof. Patents protect technical innovations. In order to demarcate both IP rights, Art. 8(1) of EU Regulation No. 6/2002 (‘Design Regulation’) stipulates:--

A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function.

Accordingly, Recital 10 of the Design Regulation provides that--

[t]echnological innovation should not be hampered by granting design protection to features dictated solely by a technical function. It is understood that this does not entail that a design must have an aesthetic quality.

So far, so simple. In practise, the application of Art. 8(1) Design Regulation can be rather difficult and contentious, as the recent CJEU judgment Papierfabriek Doetinchem (C-684/21) shows.

Background

The plaintiff, Sprick GmbH, produces packing-paper dispensers. It holds various Registered Community Design (‘RCD’) rights for such dispensers, including the following RCD No. 001344022-0006 for a packing device‘:

It also holds European Patent No. 2897793 for such a dispenser. The actual product look like this:

The defendant, Papierfabriek Doetinchem BV, is a competitor of Sprick and sells paper dispensers, which Sprick claimed to infringe the RCD depicted above. Sprick brought an infringement action against Papierfabriek Doetinchem. Papierfabriek Doetinchem filed a counterclaim for cancellation of the RCD, claiming that all its features were dictated solely by their technical function.

The Higher Regional Court of Düsseldorf dismissed the infringement action and declared the RCD to be invalid. The court took Sprick’s patent into account and argued that all features of the product were described as being technically advantageous. The existence of other design alternatives was considered irrelevant.

Upon appeal, the German Supreme Court took the view that the Higher Regional Court attached too much importance to Sprick’s patent. The purpose of the patent’s claims, descriptions and drawings is to explain the technical aspects and not the appearance of the product. The Higher Regional Court should have examined whether visual considerations also played a role in the choice to design the product as consisting of two components, because it makes possible the two-colour appearance of the actual product shown above. Furthermore, the Higher Regional Court should not have disregarded that Sprick held a number of RCDs for variations of the dispenser, which have the same technical function.

The Supreme Court referred the case back to the Higher Regional Court. The latter took issue with the Supreme Court’s reasoning and referred the following questions to the CJEU (paraphrased):

(1) What is the significance of the fact that the design owner also holds design rights for numerous alternative designs in the assessment of the question whether the features of the appearance of a product are dictated solely by their technical function?

(2) In assessing technical functionality, is it necessary to take into account that the design allows for a multicolour appearance in the case where the colour design is not, as such, apparent from the registration?

The CJEU’s decision

Question 1

The CJEU pointed out that Art. 8(1) Design Regulation excludes design protection for features of the appearance where fulfilling a technical function is the only factor determining the choice by the designer; i.e., other considerations, in particular those related to its visual aspect, have not played a role.

The existence of alternative designs fulfilling the same function is not in itself deemed sufficient to grant design protection. If it were, the plaintiff could obtain RCDs for all technical alternatives and prevent third parties from using designs, which only incorporate a technical function. The existence of alternative designs, whether registered or not by the RCD owner, is therefore not decisive for the application of Art. 8(1) Design Regulation.

Question 2

On whether a possible multicolour appearance can be taken into account where the colour design is not apparent from the registration, the CJEU held that visual considerations, such as a design consisting of two components allowing for the multicolour appearance of a product, may, in principle, be taken into account in the overall assessment required by Art. 8(1) Design Regulation.

However, the mere possibility of a multicolour appearance is not sufficient as such, if it is not apparent in the representation of the design. Holding otherwise would jeopardise legal certainty. Neither the EUIPO nor competitors in the market could determine the nature of the constituent elements of the design, if non-visible elements were taken into account.

Comment

The CJEU’s judgment is consistent with its previous case law, while also providing several nuances to the technical function exclusion in Art. 8(1) Design Regulation. The German Supreme Court’s decision, which caused the ruling discussed above, also appears to be in line with the CJEU’s case law:

The existence of alternative designs is a factor to be taken into account but not sufficient in itself to exclude the application of Art. 8(1) Design Regulation (see DOCERAM at paras. 30 and 37). Alternative designs can show that one or more of the features of the design is arbitrary and not simply dictated by technical function. Therefore, the Higher Regional Court could not simply dismiss them as irrelevant.

As to the possibility of a multicolour appearance, this Kat understands the Supreme Court’s decision as follows. It is, of course, not relevant that various colours can be applied to Sprick’s design. However, that the product was designed so that it allows the application of different colours could be an arbitrary element sufficient to grant protection. Thus, it is not the (hypothetical) application of colours as such but that the designer created the product so that different colours can be applied. Of course, if this is the only non-technical feature, the scope of protection of the design would be very limited.

It will be interesting to see what the Higher Regional Court makes of the CJEU’s decision and whether the German Supreme Court (or even the CJEU) gets another chance to rule on this case.