With regard to the aspect of the existence of other designs, what significance is attached to the fact that the proprietor of the design also holds design rights for numerous alternative designs?

The fact that the proprietor holds design rights for numerous alternative designs is not decisive in the assessment of whether the features of appearance of a product are dictated solely by its technical function.

In the assessment as to whether the appearance is dictated solely by the 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 design is not, as such, apparent from the registration?

The fact that the design allows for a multicolour appearance cannot be taken into account if that multicolour appearance is not apparent from the registration of the design.

If Question 2 is answered in the affirmative: Does this affect the scope of protection of the design?

There is no need to answer this question as the second question was answered in the negative.

Alternative designs and multiple design rights are not decisive in assessing technical function dictation.

European Court of Justice (Tenth Chamber) · 2 maart 2023 · Judgment · Preliminary ruling

(Reference for a preliminary ruling – Intellectual property – Community designs – Regulation (EC) No 6/2002 – Article 8(1) – Features of appearance of a product dictated solely by its technical function – Criteria for assessment – Existence of alternative designs – Proprietor also holding a multitude of alternative protected designs – Multicolour appearance of a product not reflected in the registration of the design concerned)

Rechtsvraag

Whether the features of appearance of a product are dictated solely by its technical function under Article 8(1) of Regulation No 6/2002, and the implications of alternative designs and multicolour appearance not reflected in the design registration.

Regel

Art. 8(1), Regulation (EC) No 6/2002 (Community designs): A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function.
Art. 3(a), Regulation (EC) No 6/2002 (Definitions): Defines 'design' as the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.
Art. 36(1)(c), Regulation (EC) No 6/2002 (Conditions with which applications must comply): An application for a registered Community design shall contain a representation of the design suitable for reproduction.

Conclusie

The Court concluded that the assessment of whether the features of appearance of a product are dictated solely by its technical function must consider all objective circumstances, including the existence of alternative designs and whether the proprietor holds rights for numerous alternative designs, but these are not decisive. Additionally, the fact that a design allows for a multicolour appearance cannot be considered if it is not apparent from the design registration.

Tijdlijn

19-09-2012 Sprick applied for Community design No 001344022-0006 concerning a packing device.
17-10-2012 The Community design No 001344022-0006 applied for by Sprick was registered and published.
18-05-2017 The Landgericht Düsseldorf upheld Sprick’s application for discontinuation of infringement by Papierfabriek Doetinchem and dismissed Papierfabriek Doetinchem’s counterclaim for cancellation of the design.
27-06-2019 The Oberlandesgericht Düsseldorf declared the design at issue invalid, stating that all features were dictated by the technical function of the product.
Unknown The Bundesgerichtshof set aside the judgment of the Oberlandesgericht Düsseldorf and referred the dispute back for reconsideration, emphasizing the need to assess visual considerations and alternative designs.
04-11-2021 The Oberlandesgericht Düsseldorf decided to refer preliminary questions to the Court of Justice of the European Union regarding the interpretation of Article 8(1) of Regulation No 6/2002.
12-11-2021 The Court of Justice of the European Union received the request for a preliminary ruling from the Oberlandesgericht Düsseldorf.
02-03-2023 The Court of Justice of the European Union delivered its judgment on the preliminary questions regarding the interpretation of Article 8(1) and Article 10 of Regulation No 6/2002.