The EU designs regime establishes two parallel registered designs systems in Europe, by which it is possible to obtain unitary protection covering the geographical area of the EU (the 'Community regime) and/or the geographical area of one or more Member State(s) (the national regime). The EU designs regime also establishes a unitary unregistered designs system for the EU.

The above systems enable protection for the appearance of the whole or a part of a product but exclude from protection 'features of appearance of a product which are solely dictated by its technical function'. For the EU-wide design rights the applicable legislative provision is Article 8(1) of Regulation 6/2002. For national registered rights the provision is Article 7(1) of Directive 98/71 (as implemented into national law), but for simplicity only Article 8(1) is referred to below. Any unregistered design right that is national in scope is governed by the national law of the relevant country.

What exactly does the 'solely dictated by its technical function' exclusion mean? How is it assessed?

These are questions which have vexed national courts, some of which have considerable experience interpreting former national legislation in the area.

On 8 March 2018, the CJEU grasped the opportunity presented by a reference made by the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany), in a dispute between DOCERAM and CeramTec, to issue guidance.

The Court said that since the legislation was not of itself of assistance in interpreting the meaning of the exclusion, and did not draw upon the law of any Member State regarding the concept, an autonomous meaning was required.

The assessment of whether the features of appearance of a product are solely dictated by its technical function requires the court to establish whether "the technical function is the only factor which determined those features". The exclusion will not apply if considerations of another nature, in particular its visual appearance, have played a role in the choice of that feature.

The court rejected the suggestion that the exclusion will not bite if alternative design(s) exist which fulfil the same technical function. The case for permitting this analytical short-cut is that where alternatives exist, the design at issue must not be dictated solely by reason of its technical function. But the court observed that if this were the approach, it would be possible for a single economic operator to obtain several registrations conferring, in effect, a monopoly on the possible technical solutions while by-passing the conditions for obtaining a patent. This would deprive Article 8(1) of its full effectiveness.

Finally, the court confirmed that when determining whether the relevant features of appearance of a product fall within the exclusion of Article 8(1), account must be taken of all the objective circumstances relevant to the particular case, but there is no need to base those findings on the perception of an "objective observer".

Comment

The friction between these two approaches - the "multiplicity of forms" approach on the one hand, and the "no aesthetic considerations" approach on the other - has been the subject of much debate.  Indeed, the established UK approach to this exclusion was formerly the multiplicity of forms one.  However, the UK courts changed the position in the Dyson v Vax case ([2011] EWCA Civ 1206) on which Gowling WLG acted), and stated that the position should be more in line with the approach that had been taken by many of the European courts - namely the "no aesthetic considerations" approach.  This judgment from the CJEU simply appears to confirm that to be the position that should be taken by national courts across the EU.

Even now, however, the position is not clear-cut.  By stating that the national court "must take account of all the objective circumstances relevant to each individual case", it has left the door ajar for a court to take into account the number of alternative manifestations of a design, i.e. the number of different ways of achieving the same result, and so the multiplicity of forms approach may still have some relevance.

The CJEU's judgment in Case C 395/16 DOCERAM GmbH v CeramTec GmbH is available here.