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

2. 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

3. 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

4. Examples
R690/ of 22/10/2009 R211/ of 29/04/2010 Chaff cutters Fluid Distribution Equipment

5. Examples
R1772/ of 14/04/2014 R1341/ of 06/06/2016 Game cartridges Light emitting diodes

6. 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/ of 8/12/2015 Safety valves (for fluid distribution)

7. Only part of the features assessed under 8(1) CDR
Features caught by 8(1) CDR:
Technical-considerations test
R1524/ 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

8. 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/ of 17/09/2013, Pallet R2869/ of 8/94/2016, Flower boxes R2098/ of 29/02/2016, Saws (machines)

9. Conclusion for the RUBIK’s Cube if considered as a design
EUTM No Patent US 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

10. Conclusion for the DOCERAM pins
RCD to
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 .

11. 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