C-395/16 Doceram. Preliminary questions. A-G H. Saugmandsgaard Øe
‘(1) Does a technical function that precludes protection within the meaning of Article 8(1) of [Regulation No 6/2002] also exist if the design effect is of no significance for the product design, but the (technical) functionality is the sole factor that dictates the design?
(2) If the Court answers Question 1 in the affirmative: From which point of view is it to be assessed whether the individual design features of a product have been chosen solely on the basis of considerations of functionality? Is an "objective observer” required and, if so, how is such an observer to be defined?’
In the light of the information provided in the order for reference and the context in which it was made, it seems to me that the first question asks the Court, in essence, to determine if (the multiplicity of forms theory) simply establishing that such design alternatives exist implies that the contested designs are not dictated solely by the technical function of the products concerned and are not therefore covered by the exclusion provided for in Article 8(1) or (the causality theory) if the relevant criterion to that effect is whether ‘aesthetic considerations’ or ‘the design effect’ of those products (4) led their designer to opt for a specific design.
Accordingly, in the view of Advocate General Saugmansgaard Øe, the first question should be answered in the affirmative and the argument in support of acceptance of the ‘multiplicity of forms’ criterion must therefore be rejected. He thinks that the features of appearance of the product must be considered to be solely dictated by the objective of achieving a certain technical solution and that those features therefore come under the exclusion in Article 8(1) where it appears that other kinds of considerations, in particular visual ones, played no part in the adoption of the design concerned. This interpretation is supported by an analysis of the origin of Regulation No 6/2002, and Article 8(1) in particular.
In regard of the second preliminary question, the A-G notes that Article 8 also makes no reference to the perception of other categories of hypothetical person and that this approach should not be used to objectively asses what is under the technical function of the product and where the designers freedom has played. The A-G proposes that the court should take intro account all relevant circumstances of the case when the issue of technical functionality is involved in a design law procedure. A-G Saugsmandsgaar Øe suggests that the Court answer the questions as follows:
‘Article 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs must be interpreted to the effect that the protection offered by the regulation is excluded where the features of appearance of the product in question were adopted exclusively in order to permit the product to fulfil a certain technical function, and thus without any creative contribution on the part of its designer, and the fact that there may exist other shapes which allow the same technical result to be obtained is not in itself crucial in this regard.
In order to determine whether the features of appearance of a product have been adopted on the basis of considerations related solely to the technical function of a product within the meaning of Article 8(1), the court hearing the case must give an objective ruling, exercising its own discretionary power and taking account of all the relevant circumstances of each case.’