Germany: ECJ on the technical conditionality of designs

Technical solutions can be protected by patents and utility models under certain conditions. By reserving commercial exploitation exclusively to the inventor for a limited period of time, technological progress should be promoted. Once the term of protection has expired, however, in the public interest the technical solution should be freely available to all economic operators.

This may not be undermined by other industrial property rights which in turn have other conditions and objects of protection, such as design law (or formerly: registered design law).

Designs grant protection for the appearance of a product or, as it is called at the DPMA: “a temporary monopoly on the shape and colour design of your product - from cars to lemon squeezers.” Design achievements should be protected without compromising the freedom of technical development. Therefore, the monopolisation of only technically conditioned features by designs is excluded.

However, the question as to how exactly the term “exclusively technical conditionality” is to be understood remains unclear up to now. For this purpose, the ECJ has now developed binding interpretation criteria (Judgment dated 08/03/2018 - C-395/16 DOCERAM/CeramTec).

The European Court of Justice has rejected the theory of diversity of form, which has been prevalent in Germany up to now. According to this, an exclusively technical conditionality should already be denied due to the existence of design alternatives. After that, however, protection would only be denied if the desired technical effect could be produced exclusively by the one design. However, minor design alternatives are almost always possible. According to the ECJ, by registering several designs of different form, all of which, however, are suitable for achieving a certain technical solution, a position comparable to patent protection can be obtained under this approach without being subject to the conditions applicable under Patent Law.

Rather, the ECJ has joined the so-called causality theory. According to this theory, it is decisive whether a technical function was the only factor determining the appearance of the features and whether design considerations did not play a role. This is to be determined in accordance with all objective circumstances of the individual case from which the motives for the choice of the appearance characteristics would be apparent. However, the purely subjective motives of the designer are not important in this respect.

Companies are well advised to optimally safeguard product innovations by the interaction of industrial property rights. Anyone who goes beyond the purely technical requirements in terms of design will continue to have the possibility of design law protection in the future. Even if the subjective intention of the designer is not the decisive factor, it is recommended to document the individual product development phases for evidential purposes. All these considerations should be part of an IP strategy that cannot begin early enough in the product life cycle.

Author: Henning Kohlmeier