Dr. Florian Schwab analy­ses and comments on ECJ leading decision on design protec­tion in WTR Daily

Papierfabriek Doetinchem BV vs Sprick GmbH Bielefelder Papier und Wellpappenwerk & Co (Case C 684/21), ECJ Judgment of 2 March 2023

The Court of Justice of the European Union, in its judgment in the long-standing legal dispute between Sprick GmbH and the competitor Papierfabriek Doetinchem, has repeatedly commented on practice-relevant questions of the barriers to design protection in the context of the reference for a preliminary ruling by the Düsseldorf Higher Regional Court:

1. When assessing the technical functionality of a design, how should the fact that the owner of the design in question has numerous alternative designs be dealt with?
2. Is it to be taken into account for the exclusion of design protection that a registered design allows for a multi-coloured appearance, but this colour design does not result from the registration?

In his article in WTR Daily, Dr. Florian Schwab concludes that, as in its leading decision DOCERAM (judgment of 8 March 2018, C-395/16), the ECJ tends towards a rather broader interpretation of the exclusion clause. Although it is relevant for the determination whether the holder of the contested registered Community design has a large number of alternative designs, this circumstance is not decisive. In any case, the potential multicolour design of the product was not to be taken into account if this was not apparent from the registration of the design.

The article by Dr. Florian Schwab is available for download as a pdf here. This article first appeared in WTR Daily, part of World Trademark Review, in March 2023. For further information, please go to www.worldtrademarkreview.com.