Functional designs in EU law post-Doceram: harmonisation still missing

Under art. 7 (1) of Directive 98/71/EC (and equivalent art. 8(1) of Regulation 6/2002), “a design right shall not subsist in features of appearance of a product which are solely dictated by its technical function.” Recital 14 of the Directive (often relied upon by the Court of Justice) further explains that technological innovation should not be hampered by granting design protection to features dictated solely by a technical function. The most problematic part of this principle is knowing which feature shall be considered as “solely dictated by a technical function”.

Various EU Member States have had a similar provision in their national legislation well before Directive 98/71/EC was enacted. In that context, two approaches to the principle were developed: the “multiplicity of forms” theory and the “causality (or causative)” theory.

Under the “multiplicity of forms” theory, if the technical function can be achieved through the use of another, alternative form, the choice of a particular feature of the design was not determined solely by its technical function. As explained by the Advocate General in C-395/16, the “range of [alternative] forms shows that in such a case the product’s designer was not constrained by the function, but was free to opt for any one of those forms when developing the design”.

The “multiplicity of forms” theory originates from the continental system of European law and, in particular, it was widely adopted by French courts as early as the 1930s. Its main advantage is its objectivity: the judge can rely on the objective fact of the existence of alternative forms, which is easy to assess; subjective factors, such as the intentions of the designer, are not considered. In the early years of Regulation 6/2002, this theory was also applied by the EUIPO. The theory’s main disadvantage is that nothing prevents an applicant from registering all alternative designs at once (as essentially happened in DOCERAM, discussed below).

Under the opposing “causality” theory, the main factor is whether functions, other than the technical one, were decisive for the designer when developing the design. The existence of alternative forms is not considered. The Advocate General explains, in C-395/16, that under this theory “it is necessary to identify the reason why the feature in question was chosen by the designer of the product.” This theory, the AG elaborates,

Of course, the main disadvantage of the “causality” theory is its subjectivity. Before Directive 98/71/EC, the “causality” theory was popular in those countries where designs were required to have aesthetic or ornamental value (eg, the UK). A feature could thus be identified as either aesthetic or functional. Since Directive 98/71/EC, designs are no longer required to have an aesthetic quality, which complicated the application of the “causality” theory. Yet, this approach became popular among other European courts, as well as at the EUIPO.

The two theories existed on equal standing throughout the EU until the Düsseldorf Higher Regional Court submitted a reference for a preliminary ruling in C-395/16 DOCERAM [see also a 2018 comment to the case from The IPKat].

The reference originated from a claim by Doceram GmbH against CeramTec GmbH for infringement of 17 Community designs registered by Doceram for centering welding pins (such as the one to the left). In response, CeramTec filed a counterclaim against Doceram, seeking to invalidate the 17 Community designs on the ground that they did not meet the requirements of Art. 8 (1) of Regulation 6/2002. In its decision, the Düsseldorf Court of First Instance applied the “causality” theory and concluded that only one feature was not due solely to the technical function: the blue color of the product. The Dusseldorf Court of First Instance declared the designs invalid.

Doceram lodged an appeal with the Düsseldorf Court of Appeal (case 20 U 124/15). Uncertain what theory to choose, the Court of Appeal sent a reference for a preliminary ruling to the CJEU, asking whether the “multiciplicity of forms” or the “causative” theory should be applied (case C-395/16).

The CJEU stated that “it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard” (para. 32) [emphasis added]. In the second part of the judgment, the CJEU further clarified that—

“such an assessment must be made, in particular, having regard to the design at issue, the objective circumstances indicative of the reasons which dictated the choice of features of appearance of the product concerned, or information on its use or the existence of alternative designs which fulfil the same technical function, provided that those circumstances, data, or information as to the existence of alternative designs are supported by reliable evidence” (para. 37) [emphasis added].

Following a response to the reference for a preliminary ruling, the Düsseldorf Court of Appeal issued its ruling, stating that the CJEU had fully supported the “causative” theory. Accordingly, the Court of Appeal upheld the decision of the first instance and invalidated the 17 designs.

Yet, as certain commentators foresaw, the CJEU’s ruling were too broadly formulated to achieve harmonisation among national courts. While the Düsseldorf Higher Regional Court believed that the Court of Justice had clearly adopted the “causality” theory, other national courts read the judgment differently. This becomes apparent when looking into the judgment by the Paris Appeal Court in case No 17/13117, which went as follows.

In 2013, a Belgian company Babyliss registered a Community design for a “hair styling machine” (one of the claimed images is shown to the right). In 2015, Babyliss filed a lawsuit in the Paris Court of First Instance against the French companies SAS CALOR and SAS GROUPE for infringement of this design. The defendants filed a counterclaim, seeking to declare the design invalid and claiming that the design’s features were solely dictated by its technical function.

In May 2017, the Paris Court of First Instance rejected the counterclaim. Following the traditional French approach to this issue, the Paris Court applied the “multiplicity of forms” test. It pointed out that the existence of other possible forms for hair curlers may be a sufficient proof of creative effort, which had led to the choice of a certain form.

SAS CALOR and SAS GROUPE appealed against this decision to the Paris Court of Appeal. In its 2019 decision, the Court of Appeal reminded the parties of the key provisions of the judgment in C-395/16, but noted that it did not follow from that judgment that national courts could not apply the “multiplicity of forms” theory: “information as to the existence of alternative designs” was suggested by the CJEU as one of the criteria in the analysis. Thus, the Court of Appeal upheld the findings of the first instance court and dismissed the appeal.

Notably, the litigation over this EU-wide design right might have gone differently, if the defendants had their seat in Germany, where the “causative” theory is applied. This shows how important harmonisation is for interpreting the functionality criterion, especially when it comes to Community designs. With 2022 just around the corner, we will soon see what the EU lawmakers have prepared to achieve this.