Design protection is excluded for product features solely dictated by its technical function, in order to prevent monopolization of technical solutions by means of design protection (cf. Art. 8 (1) CDR, Sec. 3 (1) No. 1 German Design Act; cf. on trademark protection: EU Court of Justice (CJEU), Judg. of 14/9/2010- C-48/09 P, para. 48 – Lego). Therefore, a design solely dictated by its technical function lacks of protection according to the CJEU case law, if the designer’s sole motivation for choosing a certain product feature is the need to realize a technical function, but no other considerations with regard to the appearance of the feature. Indeed, it is not decisive whether alternative designs individually exist (see judgment of 8/3/2018 – C-395/16, para. 30 – DOCERAM). However, existing alternative design variations that fulfill the same technical function can still serve as indicator for the designer’s motivation to choose a certain product feature. Insofar, a certain “aesthetic surplus” is not essential for the protection of a feature, because aesthetic substance does not constitute a requirement for design protection (see CJEU, para. 37 – DOCERAM and recital 10 (2) CDR).
In this regard, the German Federal Court of Justice (BGH) has recently ruled that design protection can be available even if a technical intellectual property right (patent or utility model) has been applied for or granted for the same product (judgment of 7/10/2020 – I ZR 137/19 – Paper dispenser). Indeed, patent claims, descriptions as well as drawings in patent publications must be taken into account for the overall assessment of a feature being solely dictated by its technical function. In particular, it may result from these elements of the disclosing document, which product features realize the underlying technical teaching and, thus, the technical function dictates that feature. However, lacking considerations on the actual product design or mere considerations on the technical function in a patent publication do not lead to the conclusion that a product feature is solely technically dictated.
Nevertheless, the existence of a patent publication relating to the product means that the design owner must, in the event of a dispute, demonstrate that and why the product’s appearance is not merely technically dictated (BGH, para. 28 – paper dispenser), whereas the counterparty would normally have to demonstrate technical functionality. In this respect, the BGH refers to the recent preliminary ruling of the CJEU on copyright protection of a work. According to this ruling, a product is not protectable under copyright law, if its shape is solely dictated by a technical function. However, patent publications and the function of the product shape in achieving the same technical result are only to be taken into account in that regard if they can reveal the author’s considerations for choosing the product shape (see CJEU, judgment of 10/6/2020 – C-833/18, para. 36 – Brompton).
In order to avoid such difficulties, it is advisable not to use specific product representations when applying for technical property rights. In particular, drawings should show only the “technically most necessary” in abstract form.