OPINION OF ADVOCATE GENERAL
SAUGMANDSGAARD ØE
delivered on 19 October 2017 (1)
Case C‑395/16
DOCERAM GmbH
v
CeramTec GmbH
(Request for a preliminary ruling
from the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany))
(Reference for a preliminary ruling — Intellectual and industrial property — Community designs — Regulation (EC) No 6/2002 — Article 8(1) — Features of appearance of a product solely dictated by its technical function — Definition of that concept — Assessment criteria)
I. Introduction
1. The request for a preliminary ruling from the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany) concerns the interpretation of Article 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs. (2) That provision, which has never been interpreted by the Court, provides that features of appearance of a product dictated solely by its technical function are excluded from the scope of the protection conferred by that regulation.
2. The order for reference was made in a dispute between two companies, one of which is the proprietor of a number of registered Community designs, while the other manufactures products similar to the products protected by those rights. After the former company had brought an action for an injunction against the latter, the latter company responded by arguing that the rights whose infringement had been claimed by the applicant in the main proceedings were invalid. In support of its counterclaim, it relied on the exclusion laid down in Article 8(1).
3. The questions asked by the referring court call on the Court to define the concept of ‘features of appearance of a product which are solely dictated by its technical function’ within the meaning of that provision and to determine how it should be assessed whether the designs in question have such features.
II. Legal context
4. According to recital 10 of Regulation No 6/2002, ‘[t]echnological innovation should not be hampered by granting design protection to features dictated solely by a technical function. It is understood that this does not entail that a design must have an aesthetic quality. Likewise, the interoperability of products of different makes should not be hindered by extending protection to the design of mechanical fittings. Consequently, those features of a design which are excluded from protection for those reasons should not be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection’.
5. Article 4 of the regulation, ‘Requirements for protection’, reads as follows:
‘1. A design shall be protected by a Community design to the extent that it is new and has individual character.
2. A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character:
(a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter; and
(b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.
…’
6. Article 5 of the regulation, ‘Novelty’, provides in paragraph 1 that ‘[a] design shall be considered to be new if no identical design has been made available to the public’.
7. Article 6 of the regulation, ‘Individual character’, provides:
‘1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public … .
2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.’
8. Article 8 of the regulation, ‘Designs dictated by their technical function and designs of interconnections’, provides in paragraph 1 that ‘[a] Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function’.
III. The dispute in the main proceedings, the questions referred and the procedure before the Court
9. DOCERAM GmbH is a company incorporated under German law which manufactures technical ceramic components. It supplies customers in the automotive, textile machinery and mechanical engineering industries. It is the proprietor of a number of registered Community designs which protect centring pins for welding in three different geometrical shapes, each of which is produced in six different types.
10. CeramTec GmbH is also a company incorporated under German law, which manufactures and markets ceramic centring pins in the same variants as those protected by the designs of which DOCERAM is the proprietor.
11. DOCERAM brought an action against CeramTec at the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany), requesting in particular that it be ordered to discontinue the infringement of its intellectual property rights. The defendant in the main proceedings brought a counterclaim for a declaration of invalidity of those rights, maintaining that the features of appearance of the products in question were dictated solely by their technical function within the meaning of Article 8(1) of Regulation No 6/2002.
12. The Landgericht Düsseldorf (Regional Court, Düsseldorf) dismissed the action brought by DOCERAM and declared the designs at issue to be invalid on the ground that they were excluded from the protection offered by the regulation under Article 8(1) because the design decision had been dictated solely by considerations of technical functionality.
13. DOCERAM appealed against that judgment to the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf). That court considered that it is relevant to the decision in the main proceedings whether, for the purposes of the application of the exclusion provided for in Article 8(1) of Regulation No 6/2002, it is necessary — as is maintained by some legal literature and case-law, particularly in Germany — to establish that there are no design alternatives fulfilling the same technical function or — as is postulated in the judgment under appeal — to determine objectively whether the desired functionality was the sole factor which dictated the physiognomy of the product in question.
14. Consequently, by decision of 7 July 2016, received at the Court on 15 July 2016, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:
‘(1) Does a technical function that precludes protection within the meaning of Article 8(1) of [Regulation No 6/2002] also exist 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 design features 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?’
15. DOCERAM, CeramTec, the Greek and United Kingdom Governments and the European Commission submitted written observations to the Court. At the hearing on 29 June 2017, they all presented oral arguments.
IV. Analysis
A. The concept of ‘features of appearance of a product … solely dictated by its technical function’ within the meaning of Article 8(1) of Regulation No 6/2002 (first question)
1. The substance of the first question and the opposing arguments
16. The referring court considers that the designs at issue in the main proceedings are new and possess an individual character in accordance with the requirements of Articles 5 and 6 of Regulation No 6/2002. (3) It is uncertain whether their protection should nevertheless be excluded under Article 8(1) of the regulation, which provides that ‘[a] Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function’, given that in the present case designs exist which it describes as ‘alternatives’ in so far as they are capable of achieving the same technical result as is produced by those designs.
17. In the light of the information provided in the order for reference and the context in which it was made, it seems to me that the first question asks the Court, in essence, to determine if simply establishing that such design alternatives exist implies that the contested designs are not dictated solely by the technical function of the products concerned and are not therefore covered by the exclusion provided for in Article 8(1) orif the relevant criterion to that effect is whether ‘aesthetic considerations’ or ‘the design effect’ of those products (4) led their designer to opt for a specific design. (5) In the event that the latter criterion is accepted by the Court, the referring court then asks it, by its second question, how it is to be assessed whether the individual design features of a product have been chosen solely by reason of technical requirements.
18. The referring court states that the question asked raises serious doubts in the light of the divergent positions which have been adopted thus far, both in legal literature and in the decision-making practice of the courts of the Member States and the European Union Intellectual Property Office (EUIPO) (formerly the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)), with regard to the interpretation of Article 8(1) of Regulation No 6/2002. There are two conflicting legal theories, which can produce diametrically opposite practical results.
19. According to a first theory, the derogation in that provision should be applied only if it is established that no design alternative allows the same technical function to be fulfilled as the design in question, as the existence of such alternatives would show that the choice of the form in question was not dictated solely by its technical function within the meaning of Article 8(1). This interpretation is based on the criterion usually known as ‘multiplicity of forms’, according to which, if other forms of a product exist that are capable of fulfilling the same technical function, the product’s design may enjoy protection, since that range of forms shows that in such a case the product’s designer was not constrained by the function, but was free to opt for any one of those forms when developing the design. (6) Thus interpreted, that provision would be applicable in relatively infrequent cases where the design in question is the only one capable of ensuring that the desired technical result is achieved.
20. In its order for reference, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) states that the application of this first hypothesis, which, as far as I know, is supported by some legal literature, particularly in Germany, (7) Belgium (8) and France, (9) is established not only in national case-law, both in Germany and in other Member States, (10) but also in the practice of EUIPO. (11) It is evident from the observations submitted to the Court, DOCERAM is the only party to take this position in the present case.
21. According to an opposingtheory, the exclusion laid down in Article 8(1) of Regulation No 6/2002 should come into play where the features of the design in question are due solely to the need to develop a technical solution, while aesthetic considerations do not have the slightest influence, as in that case there is no creative activity that is worthy of protection under the law relating to designs. Under this theory, which is linked to the ‘causality’ criterion, it is necessary to identify the reason why the feature in question was chosen by the designer of the product. (12) Thus interpreted, Article 8(1) would be applicable in all cases where the need to fulfil a certain technical function was the sole factor that dictated the design in question, without any effect on its physiognomy or its aesthetic quality, and the possible existence of design alternatives which could fulfil the same function is not crucial.
22. Although the Court is obviously not bound by these previous rulings, I note that, after being inclined towards the multiplicity of forms theory in the past, EUIPO has opted for the causality theory in its more recent decision-making practice, (13) considering that Article 8(1) of Regulation No 6/2002 denies protection to those features of a product’s appearance that were adopted exclusively in order to permit the product to fulfil its technical function, as opposed to features that were selected, at least to some degree, for the purpose of enhancing the product’s visual appearance, which are eligible for protection. (14) It seems that case-law has developed along similar lines, particularly in France (15) and the United Kingdom. (16) In the present case, CeramTec, the Greek Government, the United Kingdom Government and the Commission (17) have all supported this latter theory. That is also my point of view, for the reasons set out below.
2. The bases for the proposed interpretation
23. It can be stated, first of all, that, contrary to the claim made by DOCERAM, the wording of the provisions of Regulation No 6/2002 does not offer any guidance which is immediately helpful in answering the first question, since the concept of ‘features of appearance of a product … solely dictated by its technical function’ in Article 8(1) is not defined there and no assessment criteria are provided for. In particular, there is absolutely no mention of the criterion of the absence of design alternatives for the product concerned, as advocated by the supporters of the multiplicity of forms theory.
24. According to the Court’s settled case-law, it follows from the need for a uniform application of EU law that, where an EU act makes no reference to the law of the Member States for the definition of a particular concept, as in this case, that concept must be given an autonomous interpretation by the Court, which must take into account the overall scheme, the objectives and the origin of that instrument of EU law. (18)
25. As regards the overall scheme of Regulation No 6/2002, I note that recital 10 of the regulation provides interesting but limited illumination as to the meaning of Article 8(1), stating that ‘[t]echnological innovation should not be hampered by granting design protection to features dictated solely by a technical function. It is understood that this does not entail that a design must have an aesthetic quality’.
26. I will discuss further below the implications of the first sentence of that recital in connection with the purposes of Article 8(1). (19) As regards the second sentence, (20) the referring court states that the opponents of the causality theory claim that that theory, which seeks to dissociate the purely technical features of the product from decorative features, runs counter to the statement that it is not necessary for a design to have an aesthetic quality in order to be able to be protected.
27. It is true that such a requirement is not expressly laid down in Articles 4 to 6 of Regulation No 6/2002 either, which set out the requirements for protection of Community designs. Similarly, the second sentence of recital 10 of the regulation states that it cannot be inferred from the ground for refusal under Article 8(1) that only forms having an aesthetic quality can benefit from protection as designs. In my view, the expression ‘this does not entail that a design must have an aesthetic quality’ means only that it is not essential for the appearance of the product in question to have an aesthetic aspect in order to be able to be protected.
28. Like CeramTec and the Greek and United Kingdom Governments, I consider that, even though the aesthetic qualities of the product in question do not constitute a crucial assessment criterion for the grant of such protection, it would be wrong to conclude that it is not the visual appearance of products that the Community design is intended to protect. As OHIM (now EUIPO) has stated, (21) it is clear from the definition of ‘design’ in Article 3(a) of Regulation No 6/2002, which expressly mentions the ‘appearance’ of the product, (22) and from the requirements of visibility, which are set out in both Article 4(2) (23) and recital 12, (24) that the examination of the external appearance, whatever its specific merit, (25) is decisive for protection by the rights conferred by a Community design. (26) I would add that emphasis is also placed on the visual aspect in Article 10(1) of the regulation, under which the product concerned must be distinguishable from previous protected designs. (27)
29. Consequently, in my view it is compatible with the wording of recital 10 of Regulation No 6/2002 to interpret Article 8(1) as not referring to cases where the features in question are the only means of fulfilling the technical function of a product, but to cases where the need to achieve that function is the only factor to explain the adoption of those features. In other words, I think that the features of appearance of the product must be considered to be solely dictated by the objective of achieving a certain technical solution and that those features therefore come under the exclusion in Article 8(1) where it appears that other kinds of considerations, in particular visual ones, played no part in the adoption of the design concerned. The key question is where the formal constraints connected with the product’s technical function stop and where its designer’s freedom of choice starts. (28)
30. Acknowledgment that this provision is an exception, which means that it should be interpreted strictly according to the referring court, does not call my analysis into question. This point cannot in itself lead to the acceptance of a criterion, in this case the multiplicity of forms criterion, which further restricts the cases where the exclusion is applicable (29) but does not have an obvious legal basis either in the text of Regulation No 6/2002 itself or in the light of its origins or objectives as set by the EU legislature.
31. In my view, my proposed interpretation is supported by an analysis of the origin of Regulation No 6/2002, and Article 8(1) in particular.
32. CeramTec asserts that the multiplicity of forms criterion should not be applied on the ground that the proposal to introduce it into EU legislation was not accepted. The Greek Government also bases a series of arguments on the travaux préparatoires for the regulation.
33. I note in this regard that in its 1991 Green Paper on the Legal Protection of Industrial Design the Commission explained that protection was excluded for features dictated exclusively by the technical function of the product in question, a rule which already existed in the vast majority of Member States, (30) by comments that seem to fluctuate, in substance, between the multiplicity of forms theory and the causality theory, which, in my view, are linked respectively to the absence of design alternatives in the light of the final form of the product and to the failure by the designer to make a creative contribution in developing the product. (31)
34. In the Commission’s original proposal from 1993, which led to the adoption of Regulation No 6/2002, Article 9(1) (now Article 8(1) of the regulation) was entitled ‘Non-arbitrary technical designs ...’ and worded as follows: ‘A Community Design right shall not subsist in a design to the extent that the realisation of a technical function leaves no freedom as regards arbitrary features of appearance’. (32)
35. The explanatory memorandum for that proposal for a regulation (33) and the commentary on Article 9(1) thereof (34) state, first of all, that the aesthetic aspect of the product is not crucial in itself, as both designs that tend towards a certain aesthetic and designs that fulfil a certain practical use are equally protectable. Above all, these extracts emphasise that Community design protection is refused in rare cases where ‘the form follows the function without any possibility of variation’, as the designer has ‘no freedom’ in the design of the product and ‘cannot [therefore] claim that the result is due to personal creativity’ and that the design has ‘individual character’. (35)
36. Furthermore, according to the amended proposal from 1999, (36) the present wording of Article 8(1) of Regulation No 6/2002 was aligned with that of Article 7(1) of Directive 98/71/EC on the legal protection of designs, (37) which seeks to harmonise the applicable laws of the Member States. (38) The travaux préparatoires for Directive 98/71 confirm that the absence of freedom of choice for the designer in designing the product and the fact that the chosen form is dictated solely by the technical function were seen, from the very start, as crucial factors in refusing protection, both in the initial proposal for that directive from 1993 (39) and in the amended proposal from 1996. (40)
37. It would seem that no criterion equivalent to the existence of design alternatives or the multiplicity of forms was adopted in the abovementioned draft legislation, but that the causality criterion was favoured instead. There is no requirement that the feature in question is the only means by which the desired technical function can be achieved. The exclusion laid down in Article 8(1) of Regulation No 6/2002 is motivated mainly by the absence of creative influence on the part of the designer over the appearance of the product, since only added value stemming from intellectual effort independent of that function justifies design protection. It seems that in its decision-making practice EUIPO has recently tended to give greater prominence to whether or not the designer had a degree of freedom in developing the product in question. (41)
38. As regards the objectives pursued by the regulation, and Article 8(1) in particular, it is not disputed by the parties — and it is, moreover, undeniable in my view — that that provision is intended mainly to prevent features of a product which are solely technical in origin being ‘monopolis[ed]’ (42) through their protection as Community designs (43) and to ensure that ‘[t]echnological innovation should not be hampered’ (44) because such protection reduces the availability of technical solutions for other economic operators. (45) Finding a balance between protecting innovation and creativity and safeguarding fair and profitable competition for all Community undertakings was one of the concerns of the legislature. (46)
39. Furthermore, it is clear from the travaux préparatoires for Regulation No 6/2002 that a further purpose of Article 8(1) is to draw the separation line between the rules on patents and the rules on designs. (47) Any protection of technical innovations must come under the former rules (48) provided the conditions for patentability are met. As CeramTec states, it may prove more difficult to obtain a patent in some cases, as that property right requires that it be demonstrated that there exists an invention meeting strict requirements, (49) and less attractive, as the term of protection offered may be less than is guaranteed by designs. (50) It was therefore necessary to avoid the risk of the provisions applicable to patents being circumvented by preventing the possibility of technical solutions being protected as designs.
40. In my view, opting for a criterion which, like multiplicity of forms, seriously limits the scope of the exclusion under Article 8(1) (51) could deprive that provision of its full effectiveness and thus prevent the above objectives being achieved, by permitting the appropriation of purely technical forms for which variants exist. (52)
41. Like CeramTec and the United Kingdom Government, I take the view that it is nearly always possible to modify the appearance of features of a product slightly, but sufficiently, (53) without affecting the desired technical function. It is therefore possible that several conceivable forms of a technical solution, or indeed all of them, could be monopolised through design protection, which would hamper the technological innovation that Regulation No 6/2002 seeks to promote. If the criterion advocated by DOCERAM were adopted, a single economic operator would be able to obtain several registrations, as a Community design, of different forms of a product, thereby benefiting from exclusive protection which is, in practice, equivalent to that offered by a patent, but without being subject to the related restrictions, which could thus be circumvented.
42. CeramTec asserts in this regard that in the dispute in the main proceedings, by seeking protection for 17 form variants of a centring pin in three different basic models, DOCERAM has not left other market operators any opportunity to use alternative forms of those products, as there are no other technically relevant forms in the field of projection welding that are capable of producing a different overall impression of the product in accordance with Article 6(1) of the regulation.
43. Lastly, my recommended interpretation has the advantage that it is consistent with the case-law which has been developed by the Court in the field of trade marks. (54) Contrary to what CeramTec seems to claim, that case-law cannot, in my view, be applied as such to the present case, given the differences that exist between the system of EU law for trade mark protection and the system for design protection. (55) However, since provisions similar to those in Article 8(1) of Regulation No 6/2002 can be found in the former system, (56) even though their wording is not completely the same, (57) and in view of the relationship between these two categories of provisions, (58) I consider that it is possible, and indeed appropriate, to take a view in the light of that case-law and, if necessary, to reason by analogy in the present case.
44. I note in this connection that, with regard to the protection granted by trade marks, the Court has ruled that the objective of the abovementioned provisions of EU law, which correspond in essence to Article 8(1) of Regulation No 6/2002, is to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of goods which a user is likely to seek in the goods of competitors. (59) As I explained above, (60) this would also appear to be why protection under Community design law is excluded in the circumstances provided for in Article 8(1).
45. It is clear from various judgments of the Court regarding trade marks that ‘a sign consisting exclusively of the shape of a product is unregistrable by virtue [of the provisions that were interpreted] if it is established that the essential functional features of that shape are attributable only to the technical result’. The Court has held that ‘the ground for refusal … of registration’ as a trade mark of ‘the shape of goods which is necessary to obtain a technical result’ ‘cannot be overcome by establishing that there are other shapes which allow the same technical result to be obtained’, in accordance with those provisions. It based this rejection, which is implicit but clear in my view, of the multiplicity of forms theory in particular on the finding that the refusal of registration is not subject to the condition that the shape at issue is the only one which could achieve the intended technical result and on the observation that a significant number of alternative shapes might become unusable for the trade mark proprietor’s competitors if such a criterion were considered to be decisive. (61)
46. In my view, these considerations are also relevant in the present case, given that, in this field too, it is not acceptable that Community designs are diverted from their purpose to offer protection to purely technical features of a product. (62)
47. Accordingly, in my view, the first question should be answered in the affirmative and the argument in support of acceptance of the ‘multiplicity of forms’ criterion must therefore be rejected. More specifically, I take the view that Article 8(1) of Regulation No 6/2002 must be interpreted to the effect that, in order to determine whether features of appearance of a product are solely dictated by its technical function, regard should not be had simply to the non-existence of alternative forms which could fulfil the same function, but it should be established that obtaining a certain technical function is the sole factor that dictated the choice of the design concerned and that no creative role was therefore played by its designer in this regard.
48. In connection with this proposed interpretation, the referring court put forwards other queries concerning the specific application of the rule in Article 8(1), which are the subject of the second question referred for a preliminary ruling.
B. The relevant assessment criteria for the purposes of the application of Article 8(1) of Regulation No 6/2002 (second question)
49. The second question is asked in the alternative, in case, as I suggest, the Court answers the first question to the effect that the relevant method for the purposes of the application of the exclusion laid down in Article 8(1) of Regulation No 6/2002 is to determine whether the features of appearance of the product in question are attributable solely to the desired technical function and not to establish the absence of design alternatives which could also fulfil that function.
50. By this question, the referring court asks, first, from which point of view it is to be assessed whether the various design features of a product have been chosen solely for reasons of technical functionality and, second, if an ‘objective observer’ is required, how that concept is to be defined.
51. The referring court explains that in the judgment under appeal before it, the Landgericht Düsseldorf (Regional Court, Düsseldorf) held that the assessment must be objective and does not depend on the personal will of the designer of the design concerned, except possibly as an indication as to whether an objective, reasonable observer would conclude that imperatives of technical functionality dictated the design decision. (63) However, according to the opponents of this approach, it is difficult to assess the view of the ‘objective observer’, that is to say, a further person existing only in theory, on a case-by-case basis.
52. As regards theobjective or subjective character of the assessment to be carried out with a view to the application of Article 8(1) of Regulation No 6/2002, the parties in the main proceedings and the interested parties which submitted observations to the Court agree that the designer’s subjective intention when he conceived the design at issue cannot constitute the key factor in determining whether that design was chosen on the basis of purely technical considerations. I also take this view.
53. An objective approach to the assessment in question promotes a uniform application of that provision in all Member States and in each of their legal systems and it offers greater predictability, which increases legal certainty for economic operators. As DOCERAM and CeramTec note, in essence, if the presumed intention of the designer were the only relevant criterion, statements made by him would in themselves be crucial in determining whether or not the design concerned can be protected and, in the event of a dispute, he could be tempted to claim that he was guided by aesthetic concerns in choosing that design, in order to ensure that the exclusion laid down in Article 8(1) of Regulation No 6/2002 is not applied against his creation. It is essential, in my view, that the competent authorities are able to decide on the basis of assessment criteria which are not subjective, but are neutral and without any risk of partiality.
54. As regards the procedure to follow in carrying out an objectiveassessment whether the appearance of a product is dictated solely by its technical function within the meaning of Article 8(1) of Regulation No 6/2002, on the other hand, the positions taken before the Court are not consistent.
55. I consider that the first problem raised by the question asked by the referring court, which mentions the possibility of considering the point of view of an ‘objective observer’, is whether or not reasoning should be based on a hypothetical person whose presumed assessment would serve as an archetype.
56. In this regard, CeramTec asserts, first, that the expression ‘objective observer’, which appears both in the judgment under appeal before the referring court and in the second question referred for a preliminary ruling, is inspired by similar phrases which have been used, with variants, in the decision-making practice of EUIPO (64) and in legal literature. (65)
57. Second, CeramTec submits that in order to ascertain whether Article 8(1) of Regulation No 6/2002 is applicable, regard should be had by analogy to the concept of ‘informed user’ which is used in Article 6(1), Article 10(1) and recital 14 of the regulation (66) and is defined in the case-law of the Court of Justice and of the General Court. (67) According to CeramTec, in so far as the review must be conducted, as in this case, in the particular situation where all users of the products concerned are professionals, the ‘informed user’ would then in practice correspond to the ‘specialist’, who has technical expertise, a concept used to assess the innovative character of the patent.
58. I do not consider it appropriate to adopt this proposal. Contrary to the claim made by CeramTec, the relevant criterion in assessing the existence of points of fact, in the context of Regulation No 6/2002, is not ‘always the “informed user”’. In particular, it has been ruled that the informed user is not necessarily able to distinguish, beyond the experience gained by using the product concerned, the aspects of the appearance of the product which are dictated by the product’s technical function from those which are arbitrary. (68) The application of Article 8(1) of Regulation No 6/2002 actually necessitates a technical assessment, which requires specific skills that even an ‘informed’ user does not always have. Consequently, the perspective of the ‘informed user’ cannot, in my view, constitute the objective assessment criterion required here.
59. Like the United Kingdom Government and the Commission, I consider that if the authors of Regulation No 6/2002 had wished to adopt a legal construct like ‘objective observer’, as the second question suggests, they would have mentioned it in Article 8(1), as they did expressly, with ‘informed user’, in Articles 6(1) and 10(1). (69) I further note that Article 8 also makes no reference to the perception of other categories of hypothetical person, such as ‘average potential buyer’, a criterion which DOCERAM suggests before dismissing, (70) or ‘average consumer’, an element which the Commission notes was considered not to be decisive in itself in assessing the purely technical character of a shape in relation to trade marks. (71)
60. The United Kingdom Government asserts, rightly in my view, that Articles 6(2) and 10(2) of Regulation No 6/2002 do not refer to the theoretical concept of ‘informed user’ in assessing the ‘degree of freedom of the designer in developing the design’ (72) and that the same — non-hypothetical — approach should be adopted in connection with Article 8(1), as here too the court hearing the dispute must evaluate objectively what comes under the technical function of the product, an aspect that is not eligible for protection, and where a role has been played by the freedom of the designer, whose creative work may be protected. (73) Such an evaluation on a case-by-case basis is already conducted, without major difficulty it would seem, by national courts (74) and by the members of OHIM (now EUIPO). (75)
61. Moreover, if the ‘objective observer’ criterion were to be accepted, this would raise a whole series of additional difficulties in defining this artificially created category and how it should be used, if only as regards the type and level of knowledge that such a person should possess.
62. The second problem raised before the Court is identifying the elements which must be included in the examination to be conducted, in my view both objectively and on a case-by-case basis, by the court hearing a dispute based on Article 8(1) of Regulation No 6/2002.
63. I concur with the majority view expressed in the observations submitted to the Court, according to which it is for the national court hearing the dispute to assess objectively and in the light of all the specific circumstances of each case whether different features of appearance of a product are based solely on considerations related to functionality.
64. In this regard, according to the Commission, the national court should take account of assessment criteria accepted by the Court in the field of trade marks on the basis of which it can be presumed that the shape is not of purely technical value, such as ‘the perception … by the average consumer[, (76)] … the nature of the category of goods concerned, the artistic value of the shape in question, its dissimilarity from other shapes in common use on the market concerned, a substantial price difference in relation to similar products, and the development of a promotion strategy which focuses on accentuating the aesthetic characteristics of the product in question’. (77) The Commission maintains that the court hearing the case should also take into consideration the existence of alternative forms which also fulfil the technical function concerned, as such existence would, as a rule, show that the designer had freedom in developing the features of appearance of the product and that the appearance was not dictated solely by functional contingencies.
65. Similarly, DOCERAM also produces a non-exhaustive list of criteria which could be relevant, namely ‘circumstances connected with the design process, advertising, use, etc.’ CeramTec asserts that the point of view of the ‘informed user’, which it proposes — wrongly in my view (78) — be used as the objective assessment criterion, should be determined ‘on the basis of an in-depth examination of all the circumstances of each case’, (79) in particular ‘the specific objective of the manufacturer at the time of design, advertising of the product which focuses on accentuating the design, any distinction or particular reputation of the design among the relevant public and the designer’s intention on the creation of the product’. (80)
66. I would point out in this respect that the assessment in question must be conducted by the court hearing the case, in my view, not only having regard to the design concerned itself, but also in the light of all the circumstances surrounding the choice of its features of appearance, bearing in mind the evidence provided by the parties, regardless of the subject or the nature of that evidence, (81) and bearing in mind any measures of inquiry ordered by that court.
67. It is not impossible that criteria which, in my view, cannot in themselves show that features of appearance of a product have been dictated solely by its technical function within the meaning of Article 8(1) of Regulation No 6/2002, such as the subjective intention of the designer or the existence of alternative forms, (82) may nevertheless be included in the body of specific evidence which courts must take into consideration in order to form their own opinion regarding the application of that provision.
68. There is no need, in my view, to make a list of the relevant criteria, even a non-exhaustive one, given that the EU legislature did not envisage recourse to this method and that it would seem that the Court did not consider this appropriate in respect of the assessment, including of the facts, which must, moreover, be conducted pursuant to Articles 4 to 6 of the regulation.
69. However, like the Greek Government, I think that it should be stressed that the court hearing the case will, if necessary, be able to conduct the required evaluation by seeking clarification from an independent expert appointed by it. I note in this regard that the national courts do not possess the sometimes highly technical competences necessary for that purpose and that they commonly order an expert report when faced with complex questions of this kind.
70. Consequently, I consider that the second question should be answered to the effect that, in order to assess whether different features of appearance of a product are based solely on considerations of technical functionality for the purposes of the application of Article 8(1) of Regulation No 6/2002, it is for the court hearing the case to carry out an objective assessment, not from the — theoretical — point of view of an ‘objective observer’, but bearing in mind — in specific terms — all the relevant circumstances of each case.
V. Conclusion
71. In the light of the foregoing considerations, I propose that the Court answer the questions referred for a preliminary ruling by the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany) as follows:
(1) Article 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs must be interpreted to the effect that the protection offered by the regulation is excluded where the features of appearance of the product in question were adopted exclusively in order to permit the product to fulfil a certain technical function, and thus without any creative contribution on the part of its designer, and the fact that there may exist other shapes which allow the same technical result to be obtained is not in itself crucial in this regard.
(2) In order to determine whether the features of appearance of a product have been adopted on the basis of considerations related solely to the technical function of a product within the meaning of Article 8(1), the court hearing the case must give an objective ruling, exercising its own discretionary power and taking account of all the relevant circumstances of each case.