Industrial Property Law

New Article L. 511-8, which incorporates the wording of Article 7 of Directive No 98/71, stipulates that an appearance whose characteristics are solely dictated by the product's technical function is not eligible for protection under design law (Art. L. 511-8, 1° IP Code). Henceforth, the same object may be protected both by patent law, as far as its technical function is concerned, and by design law, as far as its appearance is concerned.

Shapes are excluded from design protection when solely dictated by the product's technical function . Designs whose appearance is only partially imposed by the product's technical function, on the other hand, remain protectable. The Court of Appeal in Paris has held that the existence of a utilitarian function in the features of the work does not prevent it from being protected, provided that the shape of the work is not dictated by its function .

According to the Court of Justice , in order to assess whether the characteristics of a product's appearance are exclusively dictated by its technical function, it is necessary to ascertain whether the need to fulfill a technical function of the product concerned constitutes the only factor that determined the creator's choice of a feature of its appearance, to the exclusion of considerations of any other nature, such as those relating to its visual appearance. The national court must take account of all the relevant objective circumstances of each individual case, without having to rely on the perception of an objective observer. The Court also points out that the existence of alternative designs is not decisive in that regard . Thus, the criterion of multiplicity of forms is insufficient on its own to assess the scope of protection. 

Recital 21 of the Proposal for a Design Package Directive enshrines the case law of the Court of Justice, specifying that designs consisting exclusively of features or the arrangement of features dictated solely by a technical function are excluded from protection, and that a registered design may be declared invalid if the features of the appearance of the product in question have been determined solely by the need for that product to fulfill a technical function, and not by other aspects, in particular those related to the visual aspect.

Cass. crim., 5 october 2010, LawLex202100002729JBJ, according to which the trial courts should have examined whether the features of their appearance were solely dictated by their technical function, in order to consider the designs of parts for lamps as unprotectable.

CA Paris, 30 June 2015, LawLex202300008239JBJ.

Case C-395/16 DOCERAM GmbH, Judgment of 8 March 2018, LawLex202300009733JBJ.

For an application of these criteria by the French courts, see CA Paris, 26 February 2019, LawLex202300009116JBJ, according to which, in order to assess whether features of a product's appearance are solely dictated by its technical function, it must be established that this function is the only factor that has determined those features, the existence of alternative designs not being decisive in that regard.

446. System resulting from reform under Ordinance of 25 July 2001