"Think about the common sense answer and then it's probably something else!" - that's what I always say to anyone I'm training when they ask me a question about a specific piece of IP law.
As such, it's always a pleasure when a court issues a decision that makes perfect sense. That was the case in a recent CJEU decision regarding the extent to which Community designs protect designs dictated solely by technical function - C-684/21 (Papierfabriek Doetinchem B.V. v Sprick GmbH Bielefelder Papier- und Wellpappenwerk & Co)
Before going further it is worth noting that the Regulation on Community Designs states that a Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function. It follows that if all of the features of the appearance of a product are solely dictated by its technical function, a registration for the appearance of such a product will be invalid.
The glamourous field of designs concerned in the present decision is packing-paper dispensers as shown in the picture below:
Sprick produce such devices and hold Community design No 001344022-0006. Sprick brought an action under this design against competitor Papierfabriek Doetinchem. The Regional Court in Düsseldorf found infringement. Papierfabriek Doetinchem appealed to the Higher Regional Court in Düsseldorf who found the design to be invalid on the ground that all of its features were dictated by the technical function of that product. Another appeal, this time by Sprick, brought the case to Germany's Federal Court of Justice. They referred the case back to the Higher Regional Court in Düsseldorf on the grounds that they did not agree with some of the aspects of the Higher Regional Court's decision. The Higher Regional Court in Düsseldorf then decided to stay the proceedings and to refer several questions to the Court of Justice. Just pause for a moment...remember what I said about common sense earlier? Surely at this moment in time you can see what I mean?!
The questions referred were (in somewhat simplified form):
- The CJEU previously decided in DOCERAM (C-395/16) that, when designing a product, if the designer(s) only considered the need for that product to fulfil its technical function, and not any visual aspect of the design of the product, then all of the features of the appearance of the product are solely dictated by its technical function and a design registration for the design of this product will be invalid. This is the case even if other designs fulfilling the same function exist. With regard to the existence of other designs fulfilling the same function, what significance is attached to the fact that the proprietor of the design also holds design registrations for numerous alternative designs?
- When assessing whether the appearance of a design in a design registration is dictated solely by technical function, is it necessary to take into account the fact that the design allows for a multicolour appearance in the case where the colour of the design is not claimed in the relevant design registration?
- If the answer to question 2 is yes: does this affect the scope of protection of the design registration?
The CEUJ answered as follows:
First, in answer to question 1: no - if the holder of a registered design also holds registrations for numerous alternative designs, this does not on its own provide an indication that a design is not dictated solely by technical function (any more than the existence of other designs fulfilling the same function, as referred to in DOCERAM, would). It follows, as established in DOCERAM, the key consideration in deciding whether all of the features of the appearance of the design of a product are solely dictated by its technical function is whether the designer(s), when creating the design, relied on considerations other than the need for that product to fulfil its technical function, in particular those related to the visual aspect of the product.
Secondly, in answer to question 2: no - colour was not claimed in the design registration concerned. As such, the colour of the design, by definition, cannot form part of the scope of protection of the registration. It follows that, regardless of whether the colour of the design is dictated by technical function or not, if the colour of the design is not claimed in the design registration, then the colour of the design cannot form any part of an assessment as to whether the design of the design registration as a whole is dictated solely by technical function or not.
Thirdly, in answer to question 3: we answered no to question 2 so no answer to question 3 is necessary!
So what does all this mean? Business as usual (since DOCERAM) for obtaining a valid Community design registration - if you want a valid Community design registration for the design of a product, the designer(s) should have created the design using considerations other than the need for the product to fulfil its technical function. In addition, if the colour of a design chosen by a designer when designing a product is not dictated by technical function such that you may wish to rely on this as a ground for a design registration covering the design of the product being valid, make sure that the colour of the design forms part of the design registration (i.e. do not just file black and white line drawings of the design when filing for a design registration).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.