Article 8(1) CDR in the Boards‘ practice Elisabeth Fink, Boards of Appeal, EUIPO Alicante, 12 June 2017

BoA case law on Article 8(1) CDR A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function. Three types of decisions RCD declared invalid under 8(1) CDR Invalidity under 8(1) denied Only part of the RCD assessed under 8(1) CDR

RCD declared invalid under Article 8(1) CDR The test: What is the technical function of the product? What are the essential features of the design? Are the essential features determined by technical considerations only and not by aesthetic considerations? Assessment to be made from the standpoint of a reasonable observer. The evidence: Patent applications filed by the holder for the same product Technical drawings and explanations provided by the invalidity applicant NO multiplicity-of -forms test

Examples R690/2007-3 of 22/10/2009 R211/2008-3 of 29/04/2010 Chaff cutters Fluid Distribution Equipment

Examples R1772/2012-3 of 14/04/2014 R1341/2015-3 of 06/06/2016 Game cartridges Light emitting diodes

Invalidity under 8(1) CDR denied The test: May other forms serve the same technical function? Are other combinations of form and colour possible? The evidence: No evidence required R2162/2014-3 of 8/12/2015 Safety valves (for fluid distribution)

Only part of the features assessed under 8(1) CDR Features caught by 8(1) CDR: Technical-considerations test R1524/2014-3 of 23/01/2017, Hoses The technical function: an expandable hose The essential features: crumpled aspect, striated and cellular pattern, colour Red colour is not a feature of appearance solely dictated by technical function

Only part of the features assessed under 8(1) CDR 8(1) CDR not applicable: Freedom-of-the-designer test Despite some technical constraints, the designer had some scope when desiging the individual features. R2081/2011-3 of 17/09/2013, Pallet R2869/2014-3 of 8/94/2016, Flower boxes R2098/2014-3 of 29/02/2016, Saws (machines)

Conclusion for the RUBIK’s Cube if considered as a design EUTM No 162784 Patent US 4378116 - A Spatial logical toy Technical function: logical toy The essential features: cubic shape, one side white, three sides grey, black regular grid, division into 9 squares,. Cubic shape and colours are not solely dictated by technical considerations

Conclusion for the DOCERAM pins RCD 242730-0001 to 242730-0017 Technical function: welding pins The essential features: pin shape of round cross section, pointed/flatened tip and enlarged base, blue colour Unless there is evidence to the contrary Blue colour not solely dictated by technical considerations .

Conclusions: The party invoking 8(1) CDR bears the burden of proof The best evidence is a patent 8(1) CDR applies when all the features of the design are protected by a patent