President of Court, acting as Judge of Second Chamber K Lenaerts,
Judges A Rosas, C Toader, E Jarašiūnas (Rapporteur)
Advocate General H Saugmandsgaard Øe
The claimant proprietor manufactured and supplied technical ceramic weld centring pins to customers in heavy industries. It was the proprietor of a number of registered Community designs which protected such pins in three different geometrical shapes, each of which was produced in six different types. The defendant also manufactured and sold centring pins in the same variants as those protected by the proprietor’s designs. The proprietor brought an infringement action against the defendant before a German court. The latter counterclaimed for a declaration of invalidity of the contested designs, maintaining that the features of appearance of the products in question were dictated solely by their technical function, thereby excluding the designs from the protection afforded to Community designs by article 8(1) of Council Regulation (EC) No 6/2002. The court dismissed the action declaring the designs to be invalid on the ground that they were not protected under article 8(1). On the proprietor’s appeal, the German appeal court referred to the Court of Justice of the European Union for a preliminary ruling a number of questions on the interpretation of article 8(1) of the Regulation.
On the reference—
Held, (1) the expression “features of the appearance of a product which are solely dictated by its technical function” in article 8(1) of Council Regulation (EC) No 6/2002 designated an autonomous concept of European Union law which had to be interpreted in a uniform manner in all the member states. The existence of alternative designs which fulfilled the same technical function as that of the product concerned was not necessarily the only criterion for determining the application of that article. Under the system laid down by the Regulation, the appearance of the product was the decisive factor for a design, but it was not essential for that appearance to have an aesthetic aspect in order for the design to be protected. Article 8(1) of the Regulation, read in the light of recital (10) thereof, intended to prevent technological innovation from being hampered by granting design protection to features dictated solely by a technical function of a product. Therefore, article 8(1) of the Regulation excluded protection for features of the appearance of a product where considerations, other than the need for that product to fulfil its technical function, in particular those relating to the visual aspect, had not played any role in the choice of those features, even if other designs fulfilling the same function existed. Accordingly, in order to determine whether the features of appearance of a product were exclusively dictated by its technical function pursuant to article 8(1) of Regulation No 6/2002, it had to be established that the technical function was the only factor which determined those features, the existence of alternative designs not being decisive in that regard (judgment, paras 21–23, 25, 29, 31, 32, operative part, para 1).
(2) Regulation No 6/2002 did not provide any clarifications as to whether the relevant features of appearance of a product had been dictated by its technical function. Further, unlike other provisions of the Regulation, article 8(1) did not require the perception of an “objective observer” to be taken into account for the purposes of its application. It was, accordingly, for the national court, when determining whether the relevant features of the appearance of a product were covered by article 8(1), to take account of all the objective circumstances relevant to each individual case. Such an assessment had to be made, in particular, having regard to the design in issue, the objective circumstances indicative of the reasons dictating the choice of features of the product concerned, information on its use, or the existence of alternative designs which fulfilled the same technical function, provided that those circumstances, data, or information as to the existence of alternative designs were supported by reliable evidence (judgment, paras 34–38, operative part, para 2).
M Bergermann and P Rätsch for the claimant proprietor.
MA Mittelstein and A Bothe for the defendant.
Brian Nicholson (instructed by The Treasury Solicitor) for the United Kingdom Government.
G Alexaki, agent, for the Greek Government.
J Samnadda and T Scharf, agents, for the European Commission.