CJEU: the existence of alternative designs isn’t decisive in order to ascertain whether the relevant features of appearance of a product are solely dictated by its technical function.
09-03-2018 Print this page
In order to ascertain whether the features of appearance of a product are solely dictated by its function, it must be established that the function is the only factor which dictated those characteristics: the existence of alternative designs isn’t decisive. In order to ascertain whether the product is solely dictated by its technical function, the national court must take account of all the circumstances relevant to the case; there is no need to base those findings on the ‘objective observer’.
The Oberlandesgericht Düsseldorf refers the following question for a preliminary ruling to the Court of Justice; are the features of appearance of a product solely dictated by its technical function?
Read the opinion of the Advocate General Saugsmandgaard Øe here.
The Court follows the Advocate General in the judgement that the multiplicity of forms theory doesn’t lead in the explanation of article 8(1) of Regulation No 6/2002 in order to ascertain whether the relevant features of appearance of a product are solely dictated by its technical function. The Court considers that it does not follow from the regulation that the existence of alternative designs which fulfil the same technical function as that of the product concerned is the only criterion for determining the application of that article.
In case the multiplicity of forms theory is sufficient in itself to exclude the application of article 8(1) of the regulation, a single economic operator would be able to obtain several registrations as a Community design of different possible forms of a product incorporating features of appearance of that product which are exclusively dictated by its technical function, in order to benefit from exclusive protection offered by a patent, which would prevent competitors offering a product incorporating certain functional features or limit the possible technical solutions.
According to the Court the answer to the first question is, that in order the ascertain whether the features of appearance of a product are solely dictated by its technical function, must be determined whether the function is the only factor which dictated those characteristics and that the existence of alternative designs is not being decisive in this regard.
In order to ascertain whether the relevant features of appearance of a product are solely dictated by its technical function, there is, according to the court, no need to base those findings on the perception of the ‘objective observer’. The national court must take account of all the objective circumstances relevant to each individual case, in order to ascertain whether the relevant features of appearance of a product are solely dictated by its technical function.
The question if there are alternative designs which fulfil the same technical function can matter, provided that those circumstances, data, or alternatives are supported by reliable evidence.
The answer to the second question is according to the Court, that in order to determine whether the relevant features of appearance of a product are solely dictated by its technical function, within the meaning of that provision, the national court must take account of all the objective circumstances relevant to each individual case. In that regard, there is no need to base those findings on the perception of an ‘objective observer’.
IPPT20180308, CJEU, Doceram v CeramTec
