This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.
Session 2: Emerging Issues in Industrial Designs
Court of Justice of the European Union (Second Chamber) [2018]: DOCERAM GmbH v CeramTec GmbH, Case No. C-395/16
Date of judgment: March 8, 2018
Issuing authority: Court of Justice of the European Union
Level of the issuing authority: Final Instance
Type of procedure: Judicial (Civin( �/span>
Subject matter: Industrial Designs
Plaintiff: DOCERAM GmbH
Defendant: CeramTec GmbH
Keywords: Community design, Technical function, Infringement of Community design
Basic facts: DOCERAM manufactures technical ceramic components, supplying weld centring pins to the automotive, textile machinery and machinery industries. DOCERAM is the proprietor of numerous registered Community designs that protect centring pins for welding in three different geometrical shapes, each of which is produced in six different types.
CeramTec manufactures and sells centring pins in the same variants as those protected by the designs of which DOCERAM is the proprietor.
Alleging infringement of its Community designs, DOCERAM brought an action against CeramTec before the Landgericht Düsseldorf (Düsseldorf Regional Court, Germany), seeking an order for CeramTec to discontinue the infringement of its intellectual property rights. CeramTec brought a counterclaim for a declaration of invalidity of the contested designs, maintaining that the features of appearance of the products in question were dictated solely by their technical function.
The Düsseldorf Regional Court dismissed the action brought by DOCERAM, declaring the designs at issue to be invalid on the ground that they were excluded from protection by Article 8(1) of Council Regulation (EC) No. 6/2002. Under Article 8(1) of Regulation No. 6/2002, “A Community design does not subsist in features of appearance of a product which are solely dictated by its technical function.”
DOCERAM appealed the decision of the Regional Court to the Oberlandesgericht Düsseldorf (Düsseldorf Higher Regional Court).
The Düsseldorf Higher Regional Court stayed the proceedings and referred the following questions to the Court of Justice of the European Union (CJEU) for a preliminary ruling:
1. Are the features of appearance of a product considered to be solely dictated by its technical function within the meaning of Article 8(1) of Regulation No. 6/2002, which excludes protection, where 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 features of appearance 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?
Held: In response to the questions referred by the Düsseldorf Higher Regional Court, the CJEU ruled the following:
1. Article 8(1) of Regulation No. 6/2002 on Community designs must be interpreted as meaning that, in determining whether the features of appearance of a product are exclusively dictated by its technical function, the technical function must be established as the only factor that determined those features, the existence of alternative designs not being decisive in this regard.
2. Article 8(1) of Regulation No. 6/2002 must be interpreted as meaning that, in determining whether the relevant features of appearance of a product are solely dictated by its technical function within the meaning of Article 8(1), 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’.
Relevant holdings in relation to emerging issues in industrial designs: Regarding the first question referred for a preliminary ruling, the CJEU held that Article 8(1) of Regulation No. 6/2002 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.
As an initial matter, the CJEU noted that the expression “features of the appearance of a product which are solely dictated by its technical function,” found in the text of Article 8(1) of Regulation No. 6/2002, designates an autonomous concept of EU law that must be interpreted in a uniform manner in all EU Member States, taking into account the context of the provision and the objective pursued by the legislation.
The CJEU found that under the system established by Regulation No. 6/2002, and in light of the context that Articles 3(a), 6(1), and 10(1) provide to Article 8(1), appearance is the decisive factor for a design. This finding supports an interpretation of Article 8(1) that excludes from the protection conferred by Regulation No. 6/2002 a case in which the need to fulfill a technical function of a product is the only factor determining the choice of a feature of that product’s appearance, while other considerations, particularly those related to its visual aspect, have not played a role in the choice of that feature. The CJEU found such an interpretation of Article 8(1) to be further supported by the objective pursued by Regulation No. 6/2002.
Regarding the second question referred for a preliminary ruling, the CJEU noted that unlike Article 6(1) and Article 10(1) of Regulation No. 6/2002, which expressly provide for assessments based on the overall impression produced by a design on an ‘informed user’, Article 8(1) does not require the perception of an ‘objective observer’ to be considered for the purposes of its application.
The CJEU held that in determining whether the relevant features of appearance of a product are covered by Article 8(1) of Regulation No. 6/2002, it is for the national court to assess all the objective circumstances relevant to a case. Such an assessment must be made having considered the design at issue, the objective circumstances indicative of the reasons behind the choice of features of appearance of the product, or information on its use or the existence of alternative designs that fulfil the same technical function, provided that reliable evidence supports the circumstances, data, or information as to the existence of alternative designs.
Relevant legislation:
Article 8(1) of European Union Council Regulation (EC) No. 6/2002