The Court of Justice of the European Union (CJEU) recently handed down its decision in Doceram v CeramTec GmbH, in which the court was asked to clarify how to assess whether or not a product’s appearance is solely dictated by its technical function.

Design features that are solely dictated by a technical function are excluded from design protection under Article 8 of the Community Design Regulation (CDR) (2002) on the basis that technological innovation should not be hampered by granting design protection to features dictated solely by a technical function, and for which patent protection would be more appropriate.

Doceram is a ceramic component manufacturing company, which makes welding pins, for which it holds a number of registered community designs. CeramTec also manufactures welding pins. Doceram argued that CeramTec GmbH’s welding centring pins infringed Doceram’s design registrations. CeramTec brought a counterclaim action of invalidity of Doceram’s design registrations, arguing that the designs are solely dictated by their technical function and are therefore not registrable.

On appeal by Doceram, the German Higher Regional Court referred two questions to the CJEU with the aim of resolving diverging approaches.

Prior to this case, there has been a proliferation of cases in which the interpretation of Article 8(1) CDR has been debated, which has led to different EU member states adopting different tests for determining whether a design is solely dictated by a technical function.

For example in registered design cases in the UK, such as Landor and Hawa v Azure Designs Ltd (2006), the courts followed a test set out previously by the CJEU in the case of Philips v Remington (1998), where the different regulations on exclusion of technical features from trade mark protection and registered design protection were discussed.  In that case, the Advocate-General indicated that the test for exclusion of functional features from trade mark protection should be stricter (i.e. should exclude more designs) than the test for excluding functional features from registered design protection.

Thus, the test provided that if the technical function of the design feature (in that case the three rotary heads of a shaver arranged in a triangle) could be achieved by a different form, then the feature should not be excluded from design protection, even if it had been chosen for its technical function. This is referred to as the “multiplicity of forms” test.

The other approach is referred to as the “no-aesthetic consideration” theory, and provides that even if technical function could be achieved by a different design (i.e. the multiplicity of forms test would be passed), if no aesthetic consideration has been given to the design (e.g. it has a particular shape purely to achieve a technical result), the design should not be registrable.

However, in the present case concerning Doceram, in response to the national German court’s questions, the CJEU stated:

(1)   “Article 8(1) of Council Regulation (EC) No 6/2002…must be interpreted as meaning that, in order to determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard.

Thus, the CJEU has indicated that the test to be applied in assessing whether a feature of a design is solely dictated by a technical function is the “no-aesthetic consideration test”. Therefore, where a designer has chosen the feature of a design in order to enable the product to achieve a specific technical function, and no consideration has been given by the designer to the visual appearance of the feature of the design, the feature of the design will be excluded from registration under Article 8(1) CDR.

Moreover, the CJEU stated that it is for the national courts to determine whether the characteristics of the product are solely dictated by technical function. This must be done by taking into account “all objective, relevant circumstances”, including whether any alternative designs that achieve the same technical function as the product in question exist.

Arguably, the decision in this case does not entirely overrule the approach of looking for a “multiplicity of forms” which achieve the same technical function as the design feature in question.  For example, if it can be shown that a registered design would fail the “multiplicity of forms” test, and no other design could achieve the same technical function, it seems likely that the design of the feature will not have been based on aesthetics and that the “no-aesthetic consideration” test would also be failed.

In conclusion, the adoption of the “no-aesthetic consideration test” at an EU level should clarify, or at least harmonise, what constitutes a registerable design at a European level and also emphasises the different purposes of registered designs, to protect the aesthetics of a product; and patents, to protect technical features.

If you have a design you need to protect or if you require further information regarding design law, or the interface between registered designs and patents, please do not hesitate to contact us.