Designs rejected for being solely dictated by technical function
Two Board of Appeal decisions at the Community Registered Design Office (OHIM) have clarified European Union law relating to designs with a technical function. Article 8(1) of the Community Designs Regulation requires that a registered Community design (RCD) cannot subsist in features of appearance of a product that are solely dictated by its technical function.
RCD No. 253778-0001 was the first ever RCD to be declared invalid due to being solely dictated by the technical function of the product in which it was incorporated; subsequently the Board found RCD No. 273644-0001 invalid for the same reason. The designs related to a chaff cutter and a bag for packaging foodstuffs respectively, as shown below.
The Board of Appeal considered the previous legal views on the exclusion and decided that the multiplicity-of-forms approach, which suggests the exclusion applies only if the technical function could not be achieved by any other configuration, was flawed. This approach would mean that if a purely technical solution could be achieved by two alternative methods then theoretically both solutions could be the subject of a design registration. This would have the consequence that no-one else would be able to manufacture a competing product capable of performing the same technical function. This would be akin to patent protection.
The Board therefore decided that the wording of the law and a purposive approach to its interpretation favoured the conclusion reached in the 1971 UK case Amp v Utilux. Under this approach, the exclusion denies protection to those features of a product's appearance that were chosen exclusively for the purpose of designing a product that performs its function, as opposed to features that were chosen, at least to some degree, for the purpose of enhancing the product's visual appearance.
It was clarified that it is not necessary to determine what actually went on in the designer's mind, but rather an objective assessment by a reasonable observer should be used to ask whether anything other than purely functional considerations could have been relevant when a given feature was designed. Further, the fact that a feature is denied protection under the exclusion does not mean that the design must be declared invalid. The design as a whole will be invalid only if all the essential features of the appearance of the product in question were solely dictated by its technical function.
However, for the chaff cutter it was ultimately decided that “every essential feature of the design has been chosen with a view to achieving the best possible technical performance” whilst for the bag “the essential features…have been chosen with a view to designing a product that performs its function. None of those features has been chosen for the purpose of enhancing the product's visual appearance.”
Ironically, the UK courts have now adopted the multiplicity-of-forms approach. On the other hand, the French courts have abandoned it in favour of the Amp v Utilux concept.
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