Design decision on ‘Sole technical function’ packs a punch – The CJEU breaks down the technical design exclusion in Papierfabriek ruling

Summary

In a case which has been recognised as among the most impactful European design cases of the past year, the Court of Justice of the European Union (“CJEU”) has clarified the principles of ‘sole technical function’ invalidity for registered designs (Papierfabriek Doetinchem BV v Sprick GmbH Bielefelder Papier- und Wellpappenwerk & Co.)

This case revolves around a Community design registered by Sprick GmbH Bielefelder Papier- und Wellpappenwerk & Co (“Sprick”), which Papierfabriek Doetinchem BV (“Papierfabriek”) was alleged to have infringed.

Papierfabriek brought a counterclaim for cancellation of Sprick’s registered design, on the basis that the design pertained to a product with features dictated solely by technical function. On referral to the CJEU, the Düsseldorf Higher Regional Court asked whether the existence of alternative designs and the multi-coloured appearance of the product affected the technical function exclusion. CJEU’s answer to both of these questions was, in effect, “no”.

The CJEU’s broad interpretation of the technical function exclusion clause echoes a handful of recent comparable UK cases and underscores the delicate balance between design protection and technical functionality in design law.

Background

Sprick, a manufacturer of packing-paper dispensers, owned a Community design registration for a paper packing device that it wished to enforce against competitor, Papierfabriek. The registered design is illustrated below:

Source: InfoCuria

Responding to the infringement claim, Papierfabriek raised a counterclaim seeking to invalidate Sprick’s registration, arguing that all of its features were dictated solely by technical function.

The Düsseldorf Higher Regional Court referred the following questions to the CJEU:

1. The CJEU had ruled in DOCERAM (C‑395/16) that, if a product designer’s only consideration is the fulfilment of technical function (rather than any aesthetic consideration) then all the visual features of the appearance are incidental to the technical function and any design registration would therefore be invalid, even if other designs achieving the same function exist. Regarding those other designs fulfilling the same function, what significance is attached in the current case to the fact that Sprick itself also holds design registrations for numerous alternative designs?

The CJEU stressed that all relevant objective circumstances should be taken into account – i.e. including those dictating the choice of features of appearance and the possession by the design holder of alternative design registrations.  However, the latter is not decisive for the application of the technical function exclusion. The key consideration is whether the designer relied on considerations other than technical function in designing the product, in particular, those related to the product’s visual aspect. The mere fact that other designs could have fulfilled the same function (the so-called ‘multiplicity of forms’ theory) did not mean the design in question could not still be “solely dictated” by technical function when judged objectively.

1. In assessing whether the appearance of a design registration is dictated solely by technical function, is it appropriate to consider the fact that the design allows for a multicolour appearance where this feature is not claimed in the relevant design registration?

The answer to this question was “no”: as the design registration did not claim colour, this feature could not form part of the scope of protection of the registration and could not form any part of the assessment on technical function.

In short, if designers want to ensure that their Community design is valid, they should ensure that they have created the design using considerations other than technical function, by including visual features which are wholly independent from the product’s functionality. If a particular colourway is selected (not dictated by technical function) that the designer might wish to rely on as evidence that a design is not exclusively dictated by technical function, this must form part of the design as registered (i.e. black and white line drawings will not suffice).

What this means for designers

The courts in Doceram were reluctant to accept that the existence of multiple alternative designs would, in itself, be sufficient to establish that a design is not dictated by a technical solution. Otherwise, there might be scope for a design owner to effectively monopolise a technical solution by registering every possible embodiment of it and presenting each of them as an ‘alternative’ that demonstrates design freedom. In Papierfabriek, the court has once again taken a broad approach and allowed future courts a wide remit when assessing technical function, by focusing on “the reasons which dictated the choice of features of appearance of the product concerned”. It is the design in question, and the designer’s perceived intention (judged objectively), that matters.

This aligns with the principles laid down in the recent UK decision in Chiaro v Mayborn which, among other things, considered the impact of earlier patent registrations on the scope of protection of the pleaded design – and specifically, whether certain functional features should benefit from protection. Here, the High Court considered the limited design freedom of registered designs for in-bra wearable hands-free breast pumps due to the functional requirements of the products. Having found that certain features of the claimant’s design were solely technical and therefore excluded from protection, the court ultimately held that the defendant’s product created a different overall impression on the informed user, leading to a finding of non-infringement. The existence of earlier patent registrations relating to wearable breast pumps (including the claimant’s own patent) pointed to the technical benefits of certain aspects of the design and, while not conclusive, provided strong objective evidence that those aspects were exclusively functional, rather than aesthetic. Our LawNow article on the Chiaro case can be found here.

Together, these cases highlight the fundamental importance for designers and design holders to take existing and parallel designs and patents into account as part of the creative process to ensure that design registrations are enforceable and safeguarded against counterclaims or invalidity attacks.