In its decision “Papierspender” [paper dispenser] of 7 October 2020 (I ZR 137/19), the First Civil Senate of the German Federal Court of Justice (FCJ), which is responsible for design law, held that the claims, descriptions and drawings in the publication document of a patent application are objective circumstances relevant to the individual case, which, according to the decision “DOCERAM” (C-395/16) of the Court of Justice of the European Union (CJEU), shall be considered with regard to the question whether features of a design are solely dictated by its technical function. However, the FCJ held that the absence of any considerations on the visual appearance of the product in the patent application as well as the existence of considerations on its technical function does not in itself allow the conclusion that any feature of appearance is solely dictated by its technical function.
shows only features of appearance, which are solely dictated by its technical function. The plaintiff was also the owner of a European patent for such a paper dispenser. The Regional Court had allowed the action, insofar as it still had to be decided after a partial acknowledgement by the defendant, and dismissed the counterclaim for invalidity brought by the defendant against the RCD. The Higher Regional Court on the other hand, dismissed the infringement claim on appeal and upheld the counterclaim for invalidity on the grounds that all features of appearance were solely dictated by its technical function. The appeal on points of law now led to the reversal of the appeal judgement by the FCJ and to the remittal of the proceedings to the Higher Regional Court for a new hearing and decision.
The existence of alternative design possibilities alone therefore does not preclude the exclusion of protection under Art. 8 (1) CDR. Otherwise, according to the CJEU, an economic operator could register as a RCD several conceivable forms of a product which have features of appearance solely dictated by its technical function and benefit from an exclusive protection from a practical point of view, which would be equivalent to patent protection, without being subject to the requirements for obtaining a patent (CJEU loc. cit. para. 30).
According to the decision “DOCERAM” of the CJEU, it is therefore a question of whether a product’s features of appearance, when assessed objectively, were chosen solely with the intention of that product fulfilling a certain technical function. In this context, the objective circumstances from which the motives for the choice of the features of appearance become clear, information on the use of the product and also the existence of alternative designs with which the same technical function can be fulfilled must be taken into account (CJEU, loc. cit., para. 37).
The FCJ then held that in view of the task of a patent application to explain the technical function of the product, considerations relating to the visual appearance of individual features were neither necessary nor per se excluded in a patent application. Therefore, the absence of any considerations on the visual appearance of a product in a patent application as well as the existence of considerations on its technical function did not in itself allow the conclusion that any feature of appearance was solely dictated by its technical function. However, in both cases it had to be examined whether objective circumstances outside the patent disclosure indicated a visual conditionality of the appearance feature in question (para. 28).
