On the basis of its Community design registration for a packing device, the plaintiff, a German company, brought an action before the Regional Court of Düsseldorf against one of its German competitors for manufacturing and marketing an allegedly infringing product.

The defendant brought a counterclaim for cancellation of the Community design registration on the ground that all of its features were dictated solely by their technical function.

The Regional Court upheld the validity of the Community design registration and dismissed the defendant’s counterclaim on the ground that, in view of the existence of “numerous design alternatives” for that product, the features of the design at issue were not dictated solely by its technical function.

The defendant appealed to the Higher Regional Court of Düsseldorf. The latter declared the design at issue to be invalid on the ground that all of its features were dictated by their technical function despite the existence of “viable design alternatives”.

Following an appeal by the plaintiff, the German Federal Court of Justice set the Higher Regional Court of Düsseldorf’s judgment the aside and referred the dispute back to that court for reconsideration. Consequently, the Higher Regional Court decided to stay the proceedings and to refer two questions to the Court of Justice for a preliminary ruling.

According to Article 8(1) of Regulation (EC) No 6/2002 on Community designs, a Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function.

By its first question, the referring court asked whether this article must be interpreted as meaning that “ the assessment as to whether the features of appearance of a product are dictated solely by its technical function, within the meaning of that provision, must be made having regard to the objective circumstances dictating the choice of features of appearance, the existence of alternative designs which fulfil the same technical function, or the fact that the proprietor of the design at issue also holds design rights for numerous alternative designs “.

On this question, the Court of Justice considered that Article 8 (1) of Regulation No 6/2002 must be interpreted as meaning that the assessment as to whether the features of appearance of a product are dictated solely by its technical function, within the meaning of that provision, must be made having regard to all of the objective circumstances relevant to each case, inter alia those dictating the choice of features of appearance, the existence of alternative designs which fulfil the same technical function, and the fact that the proprietor of the design in question also holds design rights for numerous alternative designs, although that latter fact is not decisive for the application of that provision.

By its second question, the referring court asked, in essence, whether Article 8(1) of Regulation No 6/2002 “must be interpreted as meaning that, in the assessment as to whether the appearance of a product is dictated solely by its technical function, it is necessary to take into account the fact that the design allows for a multicolour appearance in the case where that colour design is not, as such, apparent from the registration of the design in question”.

In response, the Court held that the fact that the design of that product allows for a multicolor appearance cannot be taken into account in the case where that multicolor appearance is not apparent from the registration of the design concerned.

As a result, the Court asserted that since multicolor appearance is not apparent from the registration of the design concerned, it is not sufficient to preclude the application of the exclusion of design protection, provided for in Article 8 (1) of Regulation 6/2002.