Clarification on features of design 'solely dictated' by technical function - Newsletters ... Page 1 of 6
Clarification on features of design
'solely dictated' by technical function
May 24 2016 | Contributed by AKD
Litigation, Netherlands
○
Introduction
○
Preliminary proceedings before district court
○
Preliminary proceedings before court of appeal
○
Comment
Introduction
Article 8(1) of the EU Community Design Regulation (6/2002) provides that "a Community design shall
not subsist in features of appearance of a product that are solely dictated by its technical function".
On March 29 2016 the Court of Appeal of The Hague delivered a judgment interpreting when a feature of a
model is 'solely' dictated by its technical function. This judgment followed preliminary injunction
proceedings initiated by Dutch company Koz Products BV against its former distributor Adinco BV, in
which Koz claimed infringement of design rights for cable blocks (used for wiring cables).
Interestingly, the court also introduced the possibility that implicit obligations can arise from a contractual
relationship, obliging a (former) contractual counterparty to refrain from placing confusing products on
the market.
Preliminary proceedings before district court
Arguments
Koz claimed that the cable blocks used by Adinco (see Figure 1) infringed its 2005 and 2006 registered
Community designs and its copyrights in the designs (Figures 2 and 3 indicate Registered Community
Design 000426283-0001 and Registered Community Design 000426283-0002 respectively; both are from
2005), and that this further constituted the unlawful act of slavish imitation.
Figure 1
http://www.internationallawoffice.com/Newsletters/Litigation/Netherlands/AKD/Clar... 21-06-2016
Clarification on features of design 'solely dictated' by technical function - Newsletters ... Page 2 of 6
Figure 2
Figure 3
Decision
The district court refused the preliminary injunction and dismissed all of Koz's claims.
The court held there was a serious chance that the 2006 registered Community designs invoked by Koz
would be declared invalid in substantive proceedings or before the EU Intellectual Property Office, since
they lacked individual character in comparison with two registered Community designs filed by Koz in
2005.
The court also held that there was a serious chance of the remaining 2005 registered Community designs
(as depicted above) being declared invalid for lack of individual character, since they did not produce a
different overall impression when compared with an earlier design by a German company. In this regard,
Koz emphasised the differences in the coverings at the bottom of the cable block; however, the court held
that these coverings could not give the designs individual character, as they were solely dictated by their
technical function.
http://www.internationallawoffice.com/Newsletters/Litigation/Netherlands/AKD/Clar... 21-06-2016
Clarification on features of design 'solely dictated' by technical function - Newsletters ... Page 3 of 6
Similarly, the court found that Koz's cable blocks could not be considered as works protected by copyright
because of their technical functionality. As for the other characteristics of the cable block, the court noted
that although creative choices were made, these were too minimal to merit copyright protection.
Lastly, the court rejected Koz's claims of slavish imitation. Disregarding the question of whether Koz's
product had its own place in the market (which is required for a successful slavish imitation claim in the
Netherlands), the court held that Adinco had taken sufficient measures to prevent confusion.
Preliminary proceedings before court of appeal
Arguments
On appeal, Koz invoked only the 2005 registered Community designs. Adinco repeated its invalidity
defence, stating that the 2005 designs lacked individual character given the existence of the German
company's earlier design (see Figures 4 and 5).
Figure 4
Figure 5
Koz acknowledged that its designs shared certain characteristics with the earlier design – namely:
• minimalistic industrial design;
• three or four recesses at the upper and bottom side in order to 'catch' the cables; and
• a rectangular shape made out of an even material.
However, Koz alleged that its designs nevertheless had individual character, since two of their most
characteristic features were not present in the earlier design. These were:
• the covers on top of the recesses (located on the bottom of the cable block); and
• the attachments to the upper side of the covers.
Decision
The court recalled that under Section 8(1) of the Community Designs Regulation, design protection does
not apply to features of appearance of a product that are solely dictated by its technical function. According
to the court, a 'technical function' exists if the design makes the product more suitable for its functional
use.
http://www.internationallawoffice.com/Newsletters/Litigation/Netherlands/AKD/Clar... 21-06-2016
Clarification on features of design 'solely dictated' by technical function - Newsletters ... Page 4 of 6
Adinco further argued that the so-called 'result-oriented' doctrine applied, which precludes protection of
features of appearance that are primarily determined by a technical function, irrespective of whether the
same technical effect could be acquired through alternative designs. The court explained that according to
the result-oriented doctrine, an element would also be solely dictated by its technical function if many
alternatives existed for shaping the technical solution (eg, the handle of a cup).
However, the court did not share this view. It held instead that when alternatives are available, the
following would apply:
"[an] element of a design that is determined by a technical function in principle will be solely
dictated by a technical function,
I. if there is only one or a number of alternative technical solutions, which can achieve the same
technical effect or;
II. if there is only one or a limited number of real alternatives in the design of the same technical
solution; such an alternative not being realistic if it would only involve:
a. an addition of a (technically considered) pointless element (such as an ornament or a
thickening) to the technically determined element;
b. a deviation in the appearance of the technically determined element which is so futile it
does not have individual character compared to the design relative (causing this alternative
to fall within the scope of protection of the design)."
The court held that to view it any other way would mean that a design could almost never have an element
caused solely by a technical function, since it would almost always be possible to add pointless or futile
additions. The court held that design law may not be used to monopolise a certain technical effect in order
to prevent others from making use of technical achievements.
On the facts, the court found that the elements in Koz's designs were solely dictated by technical function
because of a lack of real alternatives. There was thus a serious chance that the 2006 designs would be
declared invalid for lacking individual character.
Like the district court, the court of appeal held that Koz's cable blocks were not protected by copyright
because they consisted of elements which were technical or functional or that could already be found in an
earlier design.
Regarding the claim of slavish imitation, the court noted that in principle, one is free to imitate a product
that is not protected by IP rights. However, this would become unlawful if the imitator could have deviated
from the design of the original product without impairing the reliability and usefulness of the imitation,
but created confusion by not doing so. The court found that the imitation by Adinco (admitted despite the
differences between the products) was allowed, even if one assumed that Koz's product had a place in the
market and the imitation would create confusion.
Lastly, the court of appeal noted that its judgment did not preclude the possibility that Adinco should
refrain from placing on the market cable blocks that could create confusion, on the grounds of the
reasonableness and fairness that parties must take into account with regard to each other during and after
a contractual relationship (ie, because Adinco was a former distributor of Koz's products). This obligation
exists during the term of the agreement and for some time thereafter (given the circumstances of the case,
the court mentioned that a one-year period was reasonable). In this case that period had already expired.
Comment
http://www.internationallawoffice.com/Newsletters/Litigation/Netherlands/AKD/Clar... 21-06-2016
Clarification on features of design 'solely dictated' by technical function - Newsletters ... Page 5 of 6
This case illustrates the difficulties with registering the design of an updated product if only small changes
have been made. In such case the risk arises that the rights holder's own earlier products can be cited as
prior art, which might affect the novelty or individual character of a later registered Community design (eg,
Koz's 2006 designs were considered invalid based on its 2005 designs).
'Solely dictated by technical function'
Most interestingly, the decision introduces a criterion regarding the features of a design that are solely
dictated by technical function, which are precluded from design protection. The criterion essentially allows
design protection for features that are dictated by a technical function where there are more than "a
number" of "realistic alternatives".
Dutch jurisprudence follows two doctrines on interpretation of the phrase 'solely dictated by technical
function':
• Under the abovementioned result-oriented doctrine, 'solely dictated' is understood to mean that
every part of the feature is necessary to obtain the desired technical effect, and consequently the
restriction does not apply if the result can also be realised using an alternative shape.
• The so-called 'device-oriented' doctrine precludes protection for every feature of the appearance
that is primarily determined by a technical function, irrespective of whether the same technical
effect could be acquired by alternative shapes.
It is generally thought that the European Court of Justice (ECJ) decisions in ECJ Philips/Remington
(C-299/99) and ECJ Lego (C-48/09) undermined the result-oriented doctrine. In these cases, in the
context of the technical refusal ground in trademark law, the ECJ explained that the existence of other
shapes which could achieve the same technical result does not in itself preclude application of the ground
for refusal. The provision was intended to preclude the registration of shapes whose essential
characteristics perform a technical function, with the result that the exclusivity inherent in the trademark
right would limit the possibility of competitors supplying a product incorporating such a function or at
least limit their freedom of choice regarding the technical solution they can adopt in order to incorporate
such a function in their products. In ECJ Lego the ECJ also remarked that a similar rationale applies in
design law.
The Court of Appeal of The Hague has now expressly rejected the device-orientated doctrine and provided
a criterion which emphasises the number of realistic available alternatives. In so doing the court has
positioned itself somewhere in between the two doctrines.
Contractual relationship
Perhaps even more interesting is the court's introduction of yet another argument to invoke in a design
dispute if one cannot successfully rely on infringement of IP rights or slavish imitation. If one is or has
been in a contractual relationship with the respondent, the reasonableness and fairness that must be taken
into account regarding a contractual partner can force the respondent to refrain from bringing onto the
market products which create confusion (ie, even in a situation where it is not stipulated in the agreement).
This may be the case during the contractual relationship and even for some time thereafter. The court
made this remark in the context of Adinco being a former distributor of Koz's cable blocks. Whether the
court's interpretation of reasonableness and fairness is in accordance with competition law is questionable.
The judgment leaves unclear:
• what kinds of contractual relationship (other than distribution agreements) can create such implicit
obligations; and
• whether it is important that the contractual relationship concern identical or similar types of
product.
http://www.internationallawoffice.com/Newsletters/Litigation/Netherlands/AKD/Clar... 21-06-2016
Clarification on features of design 'solely dictated' by technical function - Newsletters ... Page 6 of 6
The answers to these questions remain to be seen. Given the far-reaching consequences of doing so, it is
expected that courts should be restrictive in recognising such implicit obligations.
For further information on this topic please contact Bram Woltering at AKD by telephone (
+31 88 253 50 00 ) or email ([email protected]). The AKD website can be accessed at www.akd.nl.
The materials contained on this website are for general information purposes only and are
subject to the disclaimer.
ILO is a premium online legal update service for major companies and law firms worldwide. Inhouse corporate counsel and other users of legal services, as well as law firm partners, qualify for
a free subscription.
Bram Woltering
http://www.internationallawoffice.com/Newsletters/Litigation/Netherlands/AKD/Clar... 21-06-2016