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EU: Analysing the case of DOCERAM v CeramTec

On March 8 2018, the European Court of Justice decided on the preliminary questions posed by the Oberlandesgericht in Düsseldorf regarding the appearance of a design determined by technical function ((C-395/16) DOCERAM v CeramTec).

DOCERAM produces parts of technical ceramics for its clients in the machine and plant construction industries. It has protected its centring pins, in three different geometric forms, each with six different types, as a community design. CeramTec produces similar products. DOCERAM sued CeramTec for infringement. CeramTec defended itself by requesting the nullification of the design registrations because it believes the external characteristics of the products are solely determined by their technical function.

After the registrations had been declared null and void in the first instance, the judge handling the appeal pointed out that the external characteristics of a product are generally of no importance to the relevant professional public. This gave him reason to question whether protection should extend to components that are invisible once they have been put in place. He asked the court's decision on the following questions:

1. Does a technical function preclude protection within the meaning of Article 8(1) of Council Regulation (EC) No 6/2002 of December 12 2001 on Community designs (OJ 2002 L 3, p1) 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 should it be considered 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 court's opinion, it does not appear from the Regulation that the fact that there are alternative designs with which the same technical function can be fulfilled, is the only criterion for determining whether Article 8 paragraph 1 applies. If such were to be assumed, an entrepreneur could register several forms of a product with only a technically determined appearance as a Community design with the aim of obtaining the exclusive protection that is only provided by patents. Furthermore an undesirable consequence would be that competitors are unable to offer products with certain functionalities and/or that fewer technical solutions are possible. For the purpose of assessing whether the external characteristics of a product are exclusively determined by the technical function, it must therefore be ascertained whether that function is the only decisive factor. In this respect, it is not decisive that there are other designs.

According to the court, the answer to the second question must be that the assessment must take into account all the relevant objective circumstances of the specific case. The perception of the objective observer is not important.

Annelies de Bosch Kemper

V.O.Carnegieplein 5, 2517 KJThe HagueThe NetherlandsTel: +31 70 416 67 11Fax: +31 70 416 67

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