By Barnabas Mezo, ECTA Design Committee member, Oppenheim (HU) and Ralf Hackbarth, ECTA Design Committee member, Klaka (DE)

With its recent DOCERAM decision (Case C 395/16), the CJEU gave an interpretation on how to assess if a product appearance is solely dictated by its technical function and hence excluded from Community design protection. The CJEU has opted for the theory of causality, according to which the exclusion laid down in Article 8(1) CDR should come into play where aesthetic considerations do not have the slightest influence in developing the design. However, this does not mean that a design must have an aesthetic quality. At first glance, the DOCERAM decision might give a different impression.

Through its work, ECTA Design Committee found that the now applicable theory of causality, also called ‘no-aesthetical-consideration-test’, might lead to a greater legal uncertainty as to when features of appearance of a product are solely dictated by function. Furthermore, ECTA Design Committee has realised that some national courts interpret the technical functionality exception too broadly, thereby excluding designs that should be protected from protection.

Against this background, ECTA considers it necessary to comment on the interpretation of technical functionality under Article 8(1) CDR and proposes a clarification to the Recitals of the future European Design package. ECTA wants to express that technical designs features are still protected by design law, as opposed to designs features solely dictated by function under Article 8(1) CDR.

ECTA's position paper, recently submitted to the European Commission, welcomes the applicability of the causality theory (‘no-aesthetical-consideration-test’). However, this position paper also notes that the DOCERAM decision does not mean that aesthetic considerations become more important and does not at all affect the interpretation of technical features of designs with regard to the overall impression under Art. 6 and 10 CDR. Finally, it gives some practical guidance as to determining the features solely dictated by technical function.