## Facts

- DOCERAM GmbH registered multiple Community designs for technical-ceramic welding centring pins.
- Competitor CeramTec GmbH manufactured and sold welding centring pins similar in variants and shapes to those covered by DOCERAM’s registrations.
- DOCERAM sued for design infringement; CeramTec counterclaimed that the designs were invalid under Article 8(1) of Regulation (EC) No 6/2002 because the pins’ appearance features were solely dictated by technical function.
- The appellate German court found the designs were new and had individual character and noted that alternative centring-pin designs performing the same function existed, but it was uncertain how those facts affected the Article 8(1) exclusion.
- The German court referred questions to the Court of Justice of the European Union for a preliminary ruling on the correct interpretation of Article 8(1).

## Issues

1. Whether the mere existence of alternative designs capable of performing the same technical function prevents application of Article 8(1)’s exclusion for features “solely dictated” by technical function.
2. Whether the Article 8(1) assessment must be made from the perception of an “objective observer,” or instead from all relevant objective circumstances.

## Decision

- The Court held that Article 8(1) requires determining whether technical function was the only factor that determined the relevant appearance features; the existence of alternative designs is not decisive.
- The Court held that national courts must consider all relevant objective circumstances of the case and need not apply a test based on the perception of an “objective observer.”
- The Court provided an authoritative interpretation of Article 8(1) and left application of that interpretation to the referring national court.

## Legal Principles

- Features of a product’s appearance are excluded from Community design protection under Article 8(1) if the technical function is the only factor that determined those features.
- The availability of alternative designs performing the same technical function may be considered as part of the evidentiary record but does not, by itself, defeat the Article 8(1) exclusion.
- The Article 8(1) inquiry is based on objective, case-specific evidence (including reasons for selecting the features, information about use, technical constraints, and reliable proof of alternatives), not on a hypothetical “objective observer.”
- Article 8(1) serves to prevent design rights from conferring control over technical solutions, preserving the boundary between design protection and protection for technical inventions.

## Conclusion

The Court clarified that the functionality exclusion turns on whether technical considerations alone determined the design features, assessed through objective evidence; neither alternative designs nor an “objective observer” framework controls the outcome, and national courts must apply this standard to the facts.


DOCERAM GmbH v. CeramTec GmbH, Case C-395/16 (C.J.E.U. 2018)