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Technical function exclusion – more analysis of DOCERAM v CeramTec

Regular readers will recall that Class 99 blogger David Musker posted about the DOCERAM v CeramTec decision (Case C-395/16) earlier this year. Today we have a guest post with some further comments on the case from Dutch practitioner and MARQUES member Charles Gielen:


The DOCERAM/CeramTec case is the first case dealing with the meaning of the “technical function” exclusion in relation to Community designs. The CJEU’s judgment provides an interpretation of Article 8(1) of Council Regulation (EC) No. 6/2002 on Community designs (the “Regulation”) – and hence, indirectly, also of Article 7(1) of Directive 98/71/EC on the legal protection of designs – which provides that “a design right shall not subsist in features of appearance of a product which are solely dictated by its technical function”. Such features are excluded from the scope of protection of a design and, pursuant to Article 25(1)(b) of the Regulation, a design consisting solely of such features can be declared invalid.

An important judgment

This important judgment answers the following questions: in assessing whether features of a product’s appearance are dictated solely by the product’s technical function, is the existence of alternative designs with the same technical function decisive? And in making such an assessment, should the finding be based on the perception of an objective observer, or on that of someone else or on some other criterion?

The issue is a tricky one because design rights very often involve objects whose technical/functional characteristics are, at least in part, dictated by the use for which the relevant object is intended. A shaver, for example, must fulfil certain functions and the same applies in the case of a lawnmower. The new visual appearance of such an object can be protected by design rights, but this must not result in a monopoly of technical solutions.

This is the background to the “technical function” exclusion, which in this case was applied by the Landgericht Düsseldorf (Düsseldorf Regional Court). The Landgericht decided that the Community designs registered by DOCERAM for weld centring pins were invalid. On appeal, the Oberlandesgericht Düsseldorf (Düsseldorf Higher Regional Court) referred the above two questions to the CJEU for a preliminary ruling.

The CJEU’s decision on the first of the questions set out in 1 above pertains to an issue that is also a well-known subject of controversy in legal literature and case law. For example in The Netherlands, there are two opposing doctrines which, following the nomenclature used by A. Quaedvlieg in his dissertation on the relation between copyright and technology Auteursrecht op Techniek (Nijmegen, 1987), are referred to as the result-oriented doctrine (resultaatgerichte leer), also known as multiplicity-of-forms theory, and the device-oriented doctrine (apparaatgerichte leer), which is also known as the causality theory.

Under the result-oriented doctrine, the “technical function” exclusion does not apply if the same result can also be obtained using another configuration. Under the device-oriented doctrine, the exclusion immediately applies if the product is determined solely by its technical function, irrespective of the possible existence of design alternatives.

Device-oriented doctrine

In this case the CJEU, like the Advocate-General Saugmandsgaard Øe, has clearly opted for the device-oriented doctrine. It was with much anticipation that the CJEU’s decision on whether it would follow this route was awaited. Although it is true that the CJEU had chosen to apply the device-oriented doctrine in interpreting the “technical function” exclusion (which, incidentally, is formulated differently) in relation to trade marks – see in particular the Philips/Remington judgment (C-299/99), Advocate-General Ruiz-Jarabo Colomer had stated obiter dictum in his opinion in that case (paragraphs 36-38) that there should be a less severe criterion in the case of designs. In the case at hand, however, the CJEU has concluded that from the wording, context and aim of the provision, it follows that the existence of alternative designs does not preclude the application of the exclusion.

The CJEU is clearly of the opinion that the Regulation’s wording does not indicate that the existence of alternative designs is the only factor. As regards the context, the CJEU points out that a design pertains to the appearance of a product; the product’s appearance is the decisive element of a design and it is not necessary for it to have an aesthetic aspect. According to the CJEU, this confirms that protection is excluded if “the need to fulfil a technical function of the product concerned” is the sole factor based on which the designer chose a particular feature of appearance and if “considerations of another nature, in particular those related to its visual aspect” have not played a role in that choice.

There is something worth pointing out here, namely that, because of the use of the words in particular, a role can apparently also be played by considerations other than those relating to the visual aspect. What could the CJEU be referring to here? It is possible that what is meant are designs in which it is not the visual aspect that is important but for example the product’s texture, which, as can be seen from Article 3 of the Regulation, is included in the definition of “design”. In any case, as long as it is clear that not solely the technical necessity of a design (or one of its features) was the decisive factor in choosing the appearance of it, the “technical function” exclusion does not apply and the design is protected.

Having addressed the wording and the context, the CJEU lastly turns to the aims of the Regulation to justify its conclusion that in assessing whether external features of a product’s appearance are dictated solely by the product’s technical function, it should be examined whether the technical function is the sole factor which determined those features and that the existence of alternative designs is not decisive in that regard.

The aim of Article 8(1), according to the CJEU, follows from recital 10 of the Regulation, which states that technological innovation should not be hampered. If the “technical function” exclusion were to be rendered inapplicable solely by the existence of alternative designs fulfilling the same function, an economic operator could claim all these different designs, which would seriously hamper technological innovation as competitors would be unable to offer a product with certain functional features and there would be fewer possible technical solutions available.

In fact, in the case at hand, the design right proprietor had registered 17 variants of a weld centring pin as Community designs. As we are about to see, the existence of alternative designs is not without any relevance because the CJEU ruled that it can be one of the factors taken into account in assessing whether external features of a product’s appearance are dictated solely by the product’s technical function.

Thus far, I agree with the CJEU’s decision. There can be no design protection when the product’s external features have been chosen solely by their technical function: the features must have been chosen also on the basis of non-technical considerations, without an aesthetic quality being required.

The second question the CJEU had to answer is whether the basis for assessing whether features of appearance are dictated exclusively by the product’s technical function should be the perception of an “objective observer”. This hypothetical person has been used as the point of reference in decisions by EUIPO on applications for the invalidation of Community designs. As the Advocate-General correctly observed, if the Regulation’s authors had wanted to adopt an “objective observer” as the criterion they would have expressly said so, as they did regarding the determination of the overall impression produced by a design compared to earlier designs, where the criterion “informed user” is expressly mentioned (Articles 6 and 10 of the Regulation).

The CJEU has followed the Advocate-General on this point and decided that the perception of an objective observer is not the appropriate basis for assessment, but that all the objective circumstances relevant to the specific case at hand must be taken into account. However, the only reason given for this is the Regulation’s objective of creating a Community design directly applicable and protected in all the EU member states. Although I can certainly agree with the choice of the “all relevant objective circumstances” test, I do not find the justification very convincing.

Circumstances to take into account

So what kind of circumstances should be taken into account? The CJEU mentions – non-exhaustively and largely following the Advocate-General: first of all, the design in question (which is pretty obvious, I would say) and, secondly, the objective circumstances that indicate why the relevant product’s features of appearance were chosen. With regard to the latter the CJEU does not use the same wording as the Advocate-General, who refers to the designer’s subjective intention. It seems that the CJEU wanted to avoid any form of subjectivity by referring to objective circumstances showing the background of the features chosen. Hence, a statement by the designer about his/her intentions will generally carry little weight.

In addition, the CJEU mentions information on the use of the product or the existence of alternative designs which fulfil the same technical function. It seems logical that the use of the product should play a role; after all, this gives a good idea of the product’s functionality and can help in answering the question as to whether there are any technically determined properties. Take, for example, the round shallow dimples in a golf ball: their shape and distribution influence the ball’s aerodynamic drag. In the case of a lighter shaped like a golf ball, however, this technical aspect is completely irrelevant.

With regard to the second type of information, this I find to be a somewhat thornier issue. Although the existence of alternatives (see above under the discussion of the first question referred to the CJEU) can never be the sole factor for determining whether a feature is dictated solely by the product’s technical function, it can apparently be one of the factors in that determination. But the question is: how? Precisely because the CJEU places such strong emphasis on the Regulation’s aim of avoiding a monopoly of technical solutions, I would think that it is necessary to be cautious about nevertheless factoring in the existence of alternative designs when assessing whether a product’s features are dictated solely by its technical function.

All in all I consider the judgment in DOCERAM/Ceramtec to be correct, albeit subject to the questions I raised above, which will undoubtedly give rise to yet more new judgments.

This post is a translation of an article recently published in the Dutch Law Reports and has been kindly provided to Class 99 by Charles Gielen


Posted by: Blog Administrator @ 11.16
Tags: DOCERAM, CeramTec, technical function, Charles Gielen,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA860

EUIPO Guidelines, Hague Agreement and Mamas and Papas

Class 99 summarises some recent developments for design practitioners:

EUIPO Guidelines on RCDs

New Guidelines for Examination of Registered Community Designs at the EUIPO entered into force on 1 October.

The changes since the last version can be seen in the PDF versions of the Guidelines for Examination of Applications for RCDs and the Guidelines for Examination of Design Invalidity Applications.

Hague Agreement developments

As of 5 November, Hague System users can designate Canada in an international design application, meaning the total number of contracting parties that can be designated is now 69.

More information on Canada’s accession is in Information Notice 2018/7. The e-filing interface can be used to file applications.

In addition, San Marino has acceded to the Geneva Act of the Hague Agreement. It will enter into force in San Marion on 26 January 2019. More information is available in Hague Notification No. 136.

Mamas and Papas judgment

The EU General Court published its judgment in Case T-672/17 Mamas and Papas Ltd v EUIPO/Jane Wall-Budden on 23 October.

The case concerns Budden’s RCD filed on 18 August 2010, which is represented by seven coloured views (one of which is pictured). The design is intended to be incorporated into cot bumpers.

Mamas and Papas Ltd filed a declaration of invalidity asserting (1) it lacked novelty and individual character and (2) it differed from the state of the art only in features which are solely dictated by its technical function. In support of this, Mamas and Papas submitted images of an earlier design, Bumpster I.

The Invalidity Division rejected these arguments, as did the Board of Appeal.

The General Court upheld the BoA decision, finding that it was not proven that an earlier design which is identical or produces a similar overall impression had been made available to the public before the filing of the application.

Mamas and Papas had not adduced “any solid, objective evidence of effective disclosure of the earlier design on the market”. In particular, photos of the Bumpster I product did not indicate the date, place or means of disclosure.

If you would like to publish a post on these or any other design-related developments on Class 99, please contact the MARQUES editor. We welcome new contributors!

Posted by: Blog Administrator @ 13.56
Tags: EUIPO Guidelines, Hague Agreement, Mamas and Papas,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA859

Netherlands ratifies Geneva Act of The Hague Agreement

WIPO has published The Hague Notification No. 135 titled “Hague Agreement Concerning the International Registration of Industrial Designs – Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs – Ratification by the Kingdom of the Netherlands”. It states:

The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the Kingdom of the Netherlands (for the European part of the Netherlands), on September 18, 2018, of its instrument of ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (the "Geneva Act").

The said instrument was accompanied by a declaration under Article 19, according to which:

"The Benelux Office for Intellectual Property has been designated as the common office for the three Benelux countries. The territories of the three countries to which the Benelux Convention on Intellectual Property (trademarks and designs) applies are, as a whole, considered to be one single Contracting Party for the purposes of Articles 1, 3 to 18 and 31 of the Geneva Act".

It is recalled that the Kingdom of Belgium deposited, on June 7, 2013, its instrument of ratification of the Geneva Act (see The Hague Notification No. 116), and the Grand Duchy of Luxembourg deposited its instrument of accession to the said Act, on September 3, 2013 (see The Hague Notification No. 118).

The Geneva Act will therefore enter into force, with respect to the Kingdom of Belgium, the Grand Duchy of Luxembourg and the Kingdom of the Netherlands, on December 18, 2018.

Posted by: Blog Administrator @ 16.26
Tags: Hague Agreement, Geneva Act, The Netherlands,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA858

DesignEuropa Awards finalists named

The eight finalists for this year’s DesignEuropa awards have been announced, along with the winner of the Lifetime Achievement Award. The winners in the industry and small/emerging companies categories will be revealed at a ceremony in Warsaw on 27 November.

The finalists are:

Industry category:

  • ARTIS pheno robotic C-arm angiography system (RCD owner and manufacturer: Siemens Healthcare GmbH; designer: Nadja Roth (in-house design) and Tobias Reese (at-design GbR).
  • Docks modular outdoor furniture (RCD owner and manufacturer: Gandía Blasco S.A.; designer: Romero Vallejo).
  • Intercom smart video doorbell (RCD owner and manufacturer: Fibar Group, S.A.; designer: Maciej Fiedler).
  • Origami folding radiator (RCD owner and manufacturer: Tubes Radiatori SrL; designer: Alberto Meda).

Small and emerging companies category:

  • Air.Go.2.0 automatic bag drop solution for airports (RCD owner: Marcus P Holding, manufacturer: Marcus Pederson ApS; designer: Sara Clement).
  • Braster in-home breast examination system (RCD owner and manufacturer: Braster S.A.; designers: Arif Veendijk, Grzegorz Ciupiński, Jakub Oller, Jeroen de Graaf, Michał Biernat, Reiner Halbertsma, Rogier Braak, Sander Patje).
  • Loclock bicycle parking system (RCD owner and manufacturer: Durbanis SLU; designer: Alex Fernández Camps).
  • Nico Less chair (RCD owner and manufacturer: DONAR d.o.o.; designer: Primož Jeza).

Read more about all the finalists on EUIPO’s website here.

This year’s Lifetime Achievement Award winner is Hartmut Esslinger, known for his collaboration with Steve Jobs and Apple, in particular his creation of the “Snow White” design language for Apple in the 1980s. His design studio, frog design, was founded in 1969 and is now present in 11 countries. After retiring from frog in 2006, he dedicated his time to teaching, most recently at the University of Shanghai in China. Read more about him on EUIPO’s website here.

The DesignEuropa Awards are organised by EUIPO in collaboration with the Polish Patent Office. The winners are selected by an independent jury, chaired this year by Luisa Bocchietto.

The winners and finalists of the 2016 DesignEuropa Awards can be seen here.

Posted by: Blog Administrator @ 15.24
Tags: DesignEuropa, Hartmut Esslinger,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA857

Design as emotion - opening panel of the Annual Conference

It is often said that “form follows the function” but the keynote speaker at this year’s MARQUES Conference, Aurel Aebi of Atelier Oï, offered a new idea: “Form follows the emotion.” Using some beautiful examples of designs for companies such as Louis Vuitton, Pringle and Rimowa, he focused on values such as sustainability and creativity. “We like to design moments (not products),” he said.

The next speaker in the opening session, “Mark Your Design”, Laurence Morel-Chevillet of BVLGARI, echoed these views, saying: “Design is emotion.” She discussed how Bulgari created a Brand Bible which encompasses its company values.

Laurence said Bulgari typically files international design registrations through the Hague Agreement: “We begin with an international registration covering the minimum countries possible and then take the six months to decide where to extend. We tend to protect everything by drawings as it tends to give larger protection.” The biggest challenge it has is enforcement against similar designs.

The company also files 3D trade marks where possible. “We still have difficulties in some countries. But we have already enforced our rights based on this trade marks,” said Laurence. It has recently applied for a trade dress registration at the USPTO for the design of its shop on Fifth Avenue, New York.

In the third presentation, Jesse Hofhuis of Hofhuis Alkema Groen discussed “design-integrated source identifiers”, which he defined as “a common denominator integrated into the design of different products form one source”. These include the Louboutin red sole and the Burberry pattern, which Jesse described as “increasingly popular and iconic”.

A design-integrated source identifier is not primarily a design effort and may not reach the threshold for protection under copyright law, but functions like a traditional mark. The value is in the goodwill rather than the design – so they should be protected as trade marks, said Jesse.

But there are three hurdles such design-integrated source identifiers have to meet: first they must be a sign (see the Dyson judgment C-321/03); second, they must have distinctive character (Henkel judgment, C-218/01 and X Technology Swiss, T-547/08); third, they must not fall under the “shape or another characteristic” exclusion in Article 4(1)(e) of the Trade Mark Directive. On this third point, Jesse discussed the US functionality doctrine and the “bumpy road” of the shape exclusion in EU trade mark law and the term “substantial value to the goods”. He referred to several CJEU cases including:

  • Philips (C-299/99)
  • Hauck (C-205/13)
  • Benetton C-371/06

“We don’t really know when a design element is of ‘substantial value’ to the goods. We don’t know what ‘another characteristic’ is.” Also, does the exclusion apply to the design of an entire product, or also to signs applied to many different products Is it applicable to signs unprotectable under copyright and design law? Is it applicable only to primarily design efforts, or also to source identifiers?

regarding the retrospective effect of the new Directive on existing marks. And, while the exclusion already applies to EU marks, it does not apply to national marks until the Directive is implemented, and the deadline is January next year.

Jesse said it was hoped that the recent judgment in Louboutin (C-163/16) would address all these questions, but the opinion was very short and did not resolve many issues. However, a question has been referred in C-21/18 Textilis 

This session was moderated by Robert Stutz of Beutler Künzi Stutz. The MARQUES Annual Conference takes place this week, and there will be more reports on the Class 46 and Class 99 blogs between now and Friday.

Posted by: Blog Administrator @ 10.03
Tags: Annual Conference, Paris, Bulgari, ,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA856

European Parliament approves revised Copyright Directive

Class 99 readers may be interested in the latest developments relating to the proposed EU Directive on Copyright in the Digital Single Market:

On 12 September, the European Parliament backed a revised version of new copyright rules by 438 votes to 226, with 39 abstentions. Parliament will now hold negotiations with the Council, with the aim of approving a final text – probably early next year.

The revised text of the Directive, as passed, is available here.

The Directive had been rejected by Parliament in July 2018. Following that rejection, MEPs proposed changes to the controversial Articles 11 and 13.

Article 11 concerns remuneration for publishers of press publications when their content is used by ISPs. Under the revised proposals, small and micro platforms will be excluded from the scope of the Directive, and hyperlinks accompanied by individual words are also excluded. In addition, member states are to ensure that authors receive “an appropriate share” of the revenue received by publishers.

Article 13 concerns the responsibility of online service providers to ensure that unauthorised copyright-protected works or other subject matter are not available on their services. Service providers must put in place effective and expeditious complaints and redress mechanisms.

A number of other changes were also made to the text.

The MARQUES Copyright Team published a Review of the EU Copyright Legislative Package in November last year. The Team will provide further analysis in due course.

More information is also available the European Parliament, MEP Julia Reda and the news website The Verge, among other sources.

Posted by: Blog Administrator @ 10.03
Tags: Copyright, DSM, InfoSoc,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA855

Would you like to join the Class 99 blogging team?
Could you write about design cases such as Trunki?

Are you passionate about design rights? Do you have useful insights to offer on case law, legislative changes and other developments? Do you like to debate topical IP issues with like-minded colleagues?

If so, you might like to join the Class 99 blogging team. Our bloggers post updates on national, EU and international matters that are relevant to design law, and we are looking to expand the team.

The Class 99 blog is available on the MARQUES website and is also distributed by email to nearly 3,500 readers. It is an invaluable resource on design law for many practitioners around the world.

If you would like to find out more about becoming either a regular or guest blogger, please contact the blog administrator James Nurton by email or speak to him at the Annual Conference in Paris. You can also find out more about blogging at the MARQUES information desk at the Annual Conference.

No previous experience of blogging or web posting is necessary to become a blogger and assistance can be provided with aspects such as adding pictures, editing and hyperlinking. The most important qualifications are enthusiasm, curiosity and fair-mindedness!

Posted by: Blog Administrator @ 17.43
Tags: Class 99, Annual Conference, Paris,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA854

MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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