In his opinion in Case C-395/16 DOCERAM v CeramTec dated 19^th October, Advocate General Saugmandsgaard Øe (pictured) rejected the so-called multiplicity of forms theory adopted by several European courts, and concluded that:

1.      Article 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs must be interpreted to the effect that the protection offered by the regulation is excluded where the features of appearance of the product in question were adopted exclusively in order to permit the product to fulfil a certain technical function, and thus without any creative contribution on the part of its designer, and the fact that there may exist other shapes which allow the same technical result to be obtained is not in itself crucial in this regard.

2.      In order to determine whether the features of appearance of a product have been adopted on the basis of considerations related solely to the technical function of a product within the meaning of Article 8(1), the court hearing the case must give an objective ruling, exercising its own discretionary power and taking account of all the relevant circumstances of each case.

Technical function

The Court was asked to interpret Article 8(1) of the Regulation, which provides that a “Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function”.

The case was referred from Germany, where DOCERAM owns a number of registered Community designs protecting centring pins for welding in three different geometrical shapes. DOCERAM sued CeramTec for infringing its design rights, and CeramTec counter-sued for invalidity.

At first instance, the Landgericht Düsseldorf declared the designs to be invalid on the ground that the design decision had been dictated solely by considerations of technical functionality.

On appeal, the Oberlandesgericht Düsseldorf decided to ask the CJEU whether, in addressing the technical function exclusion, it is necessary to establish that there are no design alternatives fulfilling the same technical function (the multiplicity-of-forms theory) or to determine objectively whether the desired functionality was the sole factor which dictated the physiognomy of the product in question (sometimes called the causality theory).

Multiplicity of forms rejected

In his opinion, the AG firmly rejects the multiplicity-of-forms interpretation, saying:

In my view, opting for a criterion which, like multiplicity of forms, seriously limits the scope of the exclusion under Article 8(1) could deprive that provision of its full effectiveness and thus prevent the above objectives being achieved, by permitting the appropriation of purely technical forms for which variants exist …

I take the view that it is nearly always possible to modify the appearance of features of a product slightly, but sufficiently without affecting the desired technical function. It is therefore possible that several conceivable forms of a technical solution, or indeed all of them, could be monopolised through design protection, which would hamper the technological innovation that Regulation No 6/2002 seeks to promote. If the criterion advocated by DOCERAM were adopted, a single economic operator would be able to obtain several registrations, as a Community design, of different forms of a product, thereby benefiting from exclusive protection which is, in practice, equivalent to that offered by a patent, but without being subject to the related restrictions, which could thus be circumvented.

The AG went on to say that in assessing whether different features of appearance of a product are based solely on considerations of technical functionality, courts should bear in mind all the relevant circumstances of the case, rather than taking the theoretical point of view of an objective observer. He explained:

I would point out in this respect that the assessment in question must be conducted by the court hearing the case, in my view, not only having regard to the design concerned itself, but also in the light of all the circumstances surrounding the choice of its features of appearance, bearing in mind the evidence provided by the parties, regardless of the subject or the nature of that evidence, and bearing in mind any measures of inquiry ordered by that court.

It is not impossible that criteria which, in my view, cannot in themselves show that features of appearance of a product have been dictated solely by its technical function within the meaning of Article 8(1) of Regulation No 6/2002, such as the subjective intention of the designer or the existence of alternative forms, may nevertheless be included in the body of specific evidence which courts must take into consideration in order to form their own opinion regarding the application of that provision.

There is no need, in my view, to make a list of the relevant criteria, even a non-exhaustive one, given that the EU legislature did not envisage recourse to this method and that it would seem that the Court did not consider this appropriate in respect of the assessment, including of the facts, which must, moreover, be conducted pursuant to Articles 4 to 6 of the regulation.

The CJEU's judgment in the case is likely to be published next year.