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Case law: CJEU clarifies when design features are 'dictated solely by their technical function' and therefore not protected by registration of the design

Individuals and/or businesses with an EU or UK registered design should reconsider whether any feature of their product designs is dictated solely by its technical function, ie, there are no other reasons for the design, such as visual appearance, following a recent ruling.

April 2018

This update was published in Legal Alert - April 2018

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

Registering a design, whether an EU community design or a UK design, does not give legal protection to 'features of appearance of a product which are solely dictated by its technical function'.

The Court of Justice of the European Union (CJEU) has ruled that the test is whether ‘the technical function is the only factor which determined those feature’. This means the exclusion does not apply if there are other reasons for the appearance of the design, such as its visual appeal.

It disagreed with the argument that the exclusion did not apply if there were alternative designs which could achieve the same technical function.

However, the CJEU did confirm that when deciding whether a feature of a product is not protected because its appearance is solely dictated by its technical function, a court should take into account all the relevant objective circumstances – but it did not have to do so from the perspective of an 'objective observer'.

Operative date

  • Now

Recommendation

  • Individuals and/or businesses with an EU or UK registered design should consider whether any feature of the design of their products is dictated solely by its technical function, ie, there are no other reasons for the design, such as its visual appearance.

Case ref: DOCERAM GmbH v CeramTec GmbH Case C‑395/16

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