Judgment;Summary — ECLI:EU:C:2023:141
Date: 2023-03-02
Language of the case: German
Court formation: Tenth Chamber
Subject matter: General provisions;Intellectual, industrial and commercial property;Designs
Procedure: Reference for a preliminary ruling
Origin: Germany

Translation C-684/21 – 1 
Case C-684/21 
Request for a preliminary ruling 
Date lodged: 
12 November 2021 
Referring court: 
Oberlandesgericht Düsseldorf (Germany) 
Date of the decision to refer: 
4 November 2021 
Defendant, applicant in the counterclaim and appellant: 
Papierfabriek Doetinchem B.V. 
Applicant, defendant in the counterclaim and respondent: 
Sprick GmbH Bielefelder Papier- und Wellpappenwerk & Co. 
  
[…]       Order made on 4 November 2021 
[…] 
OBERLANDESGERICHT DÜSSELDORF (HIGHER REGIONAL COURT, 
DÜSSELDORF, GERMANY) 
ORDER 
In the case of 
Papierfabriek Doetinchem B.V., […] Doetinchem, Netherlands, 
 defendant, applicant in the counterclaim and 
appellant, 
[…]  
v 
Sprick GmbH Bielefelder Papier- und Wellpappenwerk & Co., […] Bielefeld, 
Germany, 
 applicant, defendant in the counterclaim and 
respondent, 
EN 
REQUEST FOR A PRELIMINARY RULING OF 4. 11. 2021 – CASE C-684/21 
 
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[…]  
 
further to the hearing on 29 June 2021, the 20th Civil Chamber of the 
Oberlandesgericht Düsseldorf […] has made the following 
o r d e r: 
I. 
The proceedings are stayed. 
II. 
The Oberlandesgericht Düsseldorf refers the following questions concerning 
the interpretation of Articles 8(1) and 10 of Council Regulation (EC) 
No 6/2002 of 12 December 2001 on Community designs to the Court of 
Justice of the European Union (‘the Court of Justice’) for a preliminary 
ruling: 
1. According to the case-law of the Court of Justice, the assessment as to 
whether the features of appearance of a product are dictated 
exclusively by its technical function must be made having regard to the 
design at issue, the objective circumstances indicative of the reasons 
which dictated the choice of features of appearance of the product 
concerned, information on its use or the existence of alternative 
designs which fulfil the same technical function (Court of Justice of 
the European Union, judgment of 8 March 2018 – C-395/16 – 
DOCERAM GmbH v CeramTec GmbH – EU:C:2018:172). With 
regard to the aspect of the existence of other designs, what significance 
is attached to the fact that the proprietor of the design also holds design 
rights for numerous alternative designs? 
2. In the assessment as to whether the appearance is dictated exclusively 
by the technical function, is it necessary to take into account the fact 
that the design allows for a multicolour appearance in the case where 
the colour design is not, as such, apparent from the registration? 
3. If Question 2 is answered in the affirmative: Does this affect the scope 
of protection of the design? 
G r o u n d s 
A) 
1 The applicant is the proprietor of Community Design No 001344022-0006 (‘the 
design at issue’), applied for on 19 September 2012, and registered and published 
PAPIERFABRIEK DOETINCHEM 
 
3 
on 17 October 2012, relating to a ‘packing device’ for which the following images 
are filed: 
 
 
2 The applicant markets a packing-paper dispenser which is manufactured 
according to that design and appears as depicted below: 
 
3 The defendant marketed a competing product which the applicant regards as 
constituting an infringement of the design at issue and which appears as depicted 
below: 
REQUEST FOR A PRELIMINARY RULING OF 4. 11. 2021 – CASE C-684/21 
 
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4 The defendant takes the view that the design at issue is invalid because all of its 
features are dictated exclusively by the technical function of the product. Against 
the action, which, after the right to seek a prohibitory injunction had been granted, 
also sought the disclosure of information and a declaration establishing liability 
for compensation, the defendant has brought a counterclaim seeking a declaration 
that the applicant’s Community design was invalid. 
5 The Landgericht (Regional Court) found against the defendant, in accordance with 
the form of order sought – in so far as is relevant here – and dismissed the 
counterclaim. The Landgericht proceeded on the assumption that, due to the 
existence of numerous design alternatives, the features of the design at issue are 
not dictated exclusively by its technical function. Following an appeal against that 
decision, the present Chamber declared the design at issue to be invalid on the 
basis of the counterclaim in its judgment of 27 June 2019 and accordingly 
dismissed the action – to the extent to which a ruling had not been made against 
the defendant on the basis of its acknowledgement. The present Chamber 
proceeded on the assumption that all the features defining the design at issue are 
dictated by its technical function. It stated that all the features are apparent from 
the patent application publication invoked by the applicant, EP 2 897 793, and are 
explained as being technically advantageous in that document. That assessment is 
also not changed by the depiction of the product in advertising. That depiction 
also highlights the technical advantages. The existence of viable design 
alternatives is irrelevant. In so far as they achieve the same technical solution, the 
applicant has had numerous conceivable designs protected. Such an approach was 
precisely what prompted the Court of Justice, in its decision in DOCERAM, not to 
allow the existence of design alternatives alone to suffice. 
6 In response to the applicant’s appeal on grounds of lack of jurisdiction brought 
against that judgment of the present Chamber, the Bundesgerichtshof (Federal 
Court of Justice) set that judgment aside and referred the dispute back to the 
present Chamber for reconsideration (BGH, judgment of 7 October 2020, 
I ZR 137/19 – Papierspender – ECLI:DE:BGH:2020:071020UIZR137.19.0). It 
stated that the present Chamber had attached too much importance to the patent 
application publication, had erred in law in its assessment of the other 
circumstances and had failed to take all aspects into account. There is, it ruled, no 
PAPIERFABRIEK DOETINCHEM 
 
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empirical principle according to which considerations relating to visual 
appearance do not play a role in the decision to opt for a feature of appearance 
which, according to a patent application publication, is necessary for its technical 
function. The present Chamber should have considered whether visual 
considerations do not also play a role in the configuration consisting of two 
components connected by means of bayonet connectors because it makes possible 
the two-colour appearance achieved in the product actually marketed. Lastly, the 
present Chamber ought not to have disregarded the fact that the applicant has a 
number of designs for alternative forms of design which pursue the same technical 
function as that pursued by the product created according to the design at issue. 
B) 
7 The outcome of the reopened appeal proceedings hinges on the answers to the 
questions referred. 
8 In that respect, with regard to the significance of the existence of design 
alternatives, the decision of the Bundesgerichtshof is based on the assumption that 
it is irrelevant that the applicant also claims design protection for those alternative 
designs. The present Chamber takes the view that that assumption is gainsaid by 
the findings of the Court of Justice in paragraph 30 of the judgment in 
DOCERAM. In that paragraph, the Court of Justice stated that there is a risk that a 
single economic operator would be able to obtain several registrations as a 
Community design of different possible forms of a product incorporating features 
of appearance of that product which are exclusively dictated by its technical 
function, thereby obtaining exclusive protection, something which is, in practice, 
equivalent to that offered by a patent, but without meeting the conditions 
applicable for obtaining a patent. In that sense, in a case that was similar in many 
respects, the General Court of the European Union also took the view that account 
should be taken of the fact that the alternative forms presented were protected by 
means of their registration as Community designs, as was the case for the 
contested design, and could not, therefore, be considered as alternatives available 
to competitors (General Court, judgment of 18 November 2020 – T-574/19 – 
Tinnus Enterprises LLC – EU:T:2020:543 – appeal pending before the Court of 
Justice as Case C-29/21 P – paragraph 70 et seq.). 
9 The present Chamber takes the view that this militates in favour of the existence 
of other designs being ascribed only minor importance in the requisite overall 
assessment in the case where the design proprietor also claims design protection 
for those other designs. 
10 Questions 2 and 3 are posed irrespective of this. The Bundesgerichtshof criticised 
the present Chamber on the ground that it did not examine whether the two-part 
configuration apparent from the design at issue was not based on the visual 
consideration that it made possible the two-colour appearance of the product 
manufactured according to the design. The fact that the two-colour appearance is 
not dictated by the technical function, as evidenced solely by the fact that the 
REQUEST FOR A PRELIMINARY RULING OF 4. 11. 2021 – CASE C-684/21 
 
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contested product is monochrome, militates in favour of that view taken by the 
Bundesgerichtshof. However, the present Chamber has reservations in that respect 
because the two-colour appearance is not apparent from the registration of the 
design. Accordingly, a feature of appearance which is not apparent from the 
registration, which clearly claims protection irrespective of the colour design, 
would establish protection. 
11 If Question 2 is answered in the affirmative, the question arises as to the 
significance of the two-colour appearance in relation to the scope of protection of 
the design at issue. This is because, if the essential reason, which is not dictated 
solely by the technical function of the product, for the choice of the features of 
appearance is to make a two-colour design possible, it appears questionable 
whether designs which do not achieve that two-colour appearance then come 
within the scope of protection. 
[…] 
[Signatures]