03 April, 2018

Only a Technicality - CJEU Decides on What Amounts to a 'Technical Function' in Registered Designs

The protection of designs is complicated, no less because the design of a particular product can often be tied to the end function it is meant to achieve. A functional element of a design might not attract protection as a design, since the regime only protects (to put very simply) aspects of designs that are of more aesthetic value. What amounts to a feature that won't be protected is difficult to decide, as many aesthetic features can often achieve a technical result as well. This prompts the question, when is a feature like that protectable or not? The CJEU took on this question on a case decided only a few weeks ago.

The case of DOCERAM GmbH v CeramTec GmbH concerned the manufacture and sale of technical ceramic components by DOCERAM, in particular, weld centring pins for the automotive and textile industries. Many of these designs are registered as Community designs (RCD 242730). CeramTec also manufactures and sells similar centring pins in the same variants as DOCERAM's registrations. DOCERAM subsequently took CeramTec to court for design infringement, with the matter ultimately ending on the desk of the CJEU.

The referring court asked two questions, which related to the factors in determining whether a design is one that is solely dictated by its technical function, and therefore not registrable under Article 8(1) of the Community Design Regulation.

The first question, as set out by the Court, asked whether "…Article 8(1)… must be interpreted as meaning that, in order to ascertain whether the features of appearance of a product are solely dictated by its function, the existence of alternative designs is decisive, or whether it must be established that function is the only factor which dictated those characteristics".

Kat's choice of 'functional' design was interesting to say the least
Having considered the legislation and relevant case law, the Court determined that "…Article 8(1)… excludes protection… for features of appearance of a product where considerations other than the need for that product to fulfil its technical function, in particular those related to the visual aspect, have not played any role in the choice of those features, even if other designs fulfilling the same function exist". In short, even if alternative designs exist, the only relevant consideration is whether the technical function is the only factor which determined the features in question and the applicability of Article 8(1).

With regards to the second question, the referring court asked whether "…Article 8(1)… must be interpreted as meaning that in order to determine whether the relevant features of appearance of a product are exclusively dictated by its technical function, that finding must be based on the perception of the ‘objective observer’".

The Article does not set out any requirements on the perspective of the assessment above, unlike other provisions in the Regulation. That in mind, the objective of the Regulation nonetheless does require national courts to take account of all the objective circumstances relevant to each individual case when determining whether features of a design are covered by the provision.

The Court finally set out that "…in order to determine whether the relevant features of appearance of a product are solely dictated by its technical function… 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’".

The case sets out clear guidelines on the assessment of features in designs that may or may not be solely dictated by their technical function. Designs are often a pile of uncertainty, being very difficult to protect (as illustrated well by the Trunki case, more on which here). Having a clearer idea as to how the lines are drawn for protection helps both proprietors and others disputing the registrations.

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