R 0690/2007-3
OHIM Third Board of Appeal
RCD 53778-0001 chaff cutters
Lindner Recyclingtech v Franssons Verkstäder

This case concerned chaff cutters (metal cylinders which shred material such as paper). The opponent alleged that the product was not visible in normal use, was wholly dictated by technical function, and lacked individual character. At first instance, the design was upheld as valid.
On appeal, OHIM's Third Board of Appeal found that the design was not wholly invisible in use – it was held not to be necessary that the part is always visible, and as this part was sometimes visible it was not invalid on that ground alone.
It also involved individual character, because the pictures of the prior art lacked a cylinder – the Board were not prepared to speculate as to whether that would be present in use.
However, they invalidated the design on the basis that it is dictated by technical function. The Board chose not to follow the Opinion of the Advocate General in the Philips ECJ case, nor that of the UK Court of Appeal in Landor & Hawa v Azure or the Spanish Court in Silverlit Toys in adopting the “multiplicity-of-forms” test, but instead adopted the test of designer’s intention, formerly applied in the UK following the House of Lords decision in Amp v Utilux. To quote:
“That provision [i.e. CDR 8(1)] denies protection to features of a product's appearance that are ‘solely dictated by its technical function'. Those words do not, on their natural meaning, imply that the feature in question must be the only means by which the product's technical function can be achieved. On the contrary, they imply that the need to achieve the product's technical function was the only relevant factor when the feature in question was selected.”
The Board rejected the applicant’s affidavit evidence that the design was produced “mainly for aesthetic reasons” as “scarcely credible”.

This decision, arguably the most important Board of Appeal decision to date, radically departs from the first instance position, UK and Spanish case law, and many commentaries on the new EU design law (though there is support for the decision in French and Netherlands case law), making a strong statement that some aesthetic element is required for design protection.