Germany: Court Of Justice Of The European Union (CJEU): Features Not Protectable By Design Law, If, From An Objective Point Of View, They Have Been Chosen Solely On The Basis Of Considerations Of Functionality (Judgment of March 8, 2018, Case C-395/16 – DOCER

Last Updated: 19 April 2018
Article by Philipe Kutschke

The CJEU has rendered the long-awaited judgment in a preliminary ruling requested by the Higher Regional Court of Düsseldorf. The Higher Regional Court referred two questions to the CJEU:

Firstly, the Higher Regional Court asked under which circumstances the appearance of a product is solely dictated by its technical function within the meaning of Article 8 (1) CDR, and hence, is not capable of being protected by design law. The CJEU clearly rejected the practice of some Member States, inter alia Germany: The relevant question is not whether the same function can also be fulfilled by an alternative design, but whether the need to fulfil a technical function of the product concerned is the only factor determining the choice by the designer of a feature of appearance of that product, while considerations of another nature, in particular those related to its visual aspect, have not played a role in the choice of that feature.

The second question concerns the method of assessment of whether the conditions of Article 8 (1) CDR are met. According to the CJEU, all the objective circumstances relevant to each individual case must be taken into account. In contrast, Article 8 (1) CDR does not require that the perception of an "objective observer" should be taken into account.

The current decision started out from a reference for a preliminary ruling of the Higher Regional Court Düsseldorf, which referred the following questions to the CJEU:

(1) Are the features of appearance of a product solely dictated by its technical function, within the meaning of Article 8(1) of CDR which excludes protection, also if the design effect is of no significance for the product design, but the (technical) functionality is the sole factor that dictates the design?

(2) If the Court answers Question 1 in the affirmative: From which point of view is it to be assessed whether the individual features of appearance of a product have been chosen solely on the basis of considerations of functionality? Is an "objective observer" required and, if so, how is such an observer to be defined?

These questions were decisive in court proceedings brought by the company DOCERAM GmbH against the company CeramTec GmbH. According to DOCERAM, CeramTec's products – centring pins, which are used for weldings in the automotive, textile and machine industries – infringe DOCERAM's Registered Community Designs. DOCERAM had registered a total of 17 Community Designs (each with one single representation), which show the centring pins in different geometries (with a long cone, with a long cone and a collar, and with a long cone and a frustum), each in six different type variations (being based on the diameter of the metric thread of the hexagon head weld nut). One example of the three geometries is reproduced hereafter:

CeramTec argued inter alia that the respective designs are solely dictated by their technical function within the meaning of Article 8 (1) CDR and are therefore not protectable and counterclaimed for a declaration of invalidity. The Regional Court of Düsseldorf had dismissed the complaint and had granted the counterclaim (Regional Court of Düsseldorf, judgment of March 13, 2015, Case  14c O 98/13). In view of divergent case law regarding the interpretation of Article 8 (1) CDR, the Higher Regional Court Düsseldorf decided to request a preliminary ruling from the CJEU regarding the two questions mentioned above (Higher Regional Court of Düsseldorf, Order of July 7, 2016, Case  I-20 U 124/15).

As regards the prerequisites of Article 8 (1) CDR, two different points of view have been taken: In Germany and further Member States of the European Union, Article 8 (1) CDR has been considered to apply only if there are no design alternatives having the same technical effect as the protected design ("multiplicity of forms theory"). In applying this theory, German Courts have applied a strict standard: the design alternatives must not only have the same technical effect but must also not be more complicated or more expensive or less efficient. The second opinion – backed inter alia by the Boards of Appeal of the EUIPO – used as a point of reference whether the choice of features of appearance were solely motivated by developing a technical solution and hence, aesthetic features would be completely irrelevant ("no-aesthetic-consideration-test"). In this respect, the second opinion relied on the assessment of a reasonable observer who would place himself in the position of the designer. 

The CJEU took the second opinion and based its reasoning on the recitals of the CDR, the statutory system as well as the purpose of Article 8 (1) CDR. Due to the wording of the provision lacking details, it would be open to any interpretation. However, from the context regarding the definition of the term "Registered Community Design" in Article 3 lit. a CDR, it should be deducted that the appearance of a product is the decisive feature of a Registered Community Design, even if an aesthetic content is not required for the design in order to be protectable. If the other opinion would be used and design alternatives would be the point of reference, a company could achieve patent-like protection without meeting the respective patent law requirements by monopolizing all design alternatives. The Court added (para. 31):

"In light of the foregoing, it must be held that Article 8(1) of Regulation No 6/2002 excludes protection under the law on Community designs for features of appearance of a product where considerations other than the need for that product to fulfil its technical function, in particular those related to the visual aspect, have not played any role in the choice of those features, even if other designs fulfilling the same function exist."

Whether a feature is solely dictated by its technical function should not be determined from the perspective of an objective observer. Instead, all the objective circumstances relevant to each individual case should be taken into account. The Court continues (para. 37):

" ... 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."


With its present decision, the CJEU settles a long-lasting dispute regarding the standards for assessing whether product appearances are solely technically dictated: The "multiplicity-of-forms" approach is expressly rejected. Rather, the decisive question is whether the choice of features by the designer was exclusively dictated by the technical function the design (or the product in which it would be incorporated) would fulfill. 

Furthermore, the CJEU also answers the question of how to assess whether the features of the design were dictated only by its technical function.  The Court rejects the notion of an "objective observer" suggested by the referring court. Rather, all objective circumstances of each case must be taken into account, including 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. This is of paramount importance, since the CJEU thereby also clarifies that the analysis cannot be limited to the design as registered and represented in the register (as many courts and some voices in the literature have been postulating). In fact, the design must be assessed by  taking into account circumstances from beyond the register. Among these objective circumstances the CJEU also lists "the existence of alternative designs". This obviously does not mean that the "multiplicity-of-forms" is suddenly "resurrected", but only that alternative designs having the same technical function my display (additional) features not dictated by technical considerations. Taking into account of facts outside of the register was previously also established in assessing the technical nature of a 3D trade mark, most recently in the 2016 "Rubik's Cube" decision (CJEU, judgment of November 10, 2016, Case C-30/15 P – Simba Toys GmbH & Co. KG v. EUIPO). The CJEU now transferred this principle to design law, without, however, making a reference to its earlier trade mark cases. The opposite opinion favored by some German courts until now has become obsolete. 

The CJEU judgment in both of its parts is to be welcomed since it leads to a much higher degree of legal certainty. As to the means of proof, it may be expected that decisions on the technical character of a design will increasingly require expert evidence. 

While this decision constitutes an important milestone in design law, the next one is already lying ahead: The Opinion of Advocate General Juliane Kokott in Case C-217/17 P, Mast Jägermeister SE v. EUIPO, became available on February 22, 2018. This case addresses the requirements regarding representations of Registered Community Designs, and which consequences arise from insufficient representations.

In a nutshell, the Advocate General is of the opinion that representations have to be clear and unambiguous, otherwise the Registered Community Design would not be capable of protection. The decision of the CJEU, expected for the summer of 2018, should have a great impact on the development of design law and future filing strategies.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions