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Clarity on EU Design Protection Exemption Following ECJ Decision


The European Court of Justice (ECJ) has recently clarified the ambiguity which has surrounded the interpretation of Article 8(1) of the Community Design Regulation (EC) no 6/2002 (CDR); the provision which excludes from design protection those design features which are dictated solely by technical function.

The ECJ’s decision in Doceram v CeramTec (C-395/16), a German design protection case, involved a dispute between two manufacturers of technical ceramic components for the machine and plant construction industries. 

Article 8(1) of the CDR stipulates that design protection would not be awarded for features of the appearance of a product that are “solely dictated by its technical function”. The provision is based on the premise that to award protection to such a design would effectively allow the owner a monopoly right in a design element which a product needed to effectively function, and in doing so stifle the innovation and development of products with the same technical function. The owner would effectively benefit from exclusive protection similar to that of a patent, albeit without enduring the registration process.

The interpretation and application of Article 8(1) has varied as no express criteria for determining whether the appearance of a product is solely dictated by its technical function are laid down in the CDR. In particular, the Courts had begun to treat the existence of alternative designs (that incorporate the same technical function) as proof of the fact that a design falls outside of the remit of Article 8(1). The European Intellectual Property Office (EUIPO) had applied an alternative test whereby a design was held to be dictated solely by its function provided that every feature of the design was determined by technical considerations notwithstanding that other designs might exist that incorporate the same technical function.  

In response to questions referred to it by the German Higher Regional Court the ECJ held that:

  • The EUIPO’s approach is the correct one; for Article 8(1) to apply, the technical function must be the only factor that determines the appearance of the product.
  • The point of view of who should determine whether the appearance is solely of technical nature was deemed not to be an “objective observer”, but rather that the national courts should assess the individual features of the appearance of the design considering all objective circumstances relevant to each case.

This decision provides clarity on this aspect of design law. However, it is likely that it may now be harder for design owners to demonstrate that a design is not solely based on technical considerations and thus defend against those parties asserting invalidity under Article 8(1). 

Contributed by: David Cullen

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