Statutory guidance

DPN 5/03: Designs dictated by technical function

Published 18 August 2003

1. Section 1C - (1)

A right in a registered design shall not subsist in features of appearance of a product which are solely dictated by the product’s technical function.

The new legislation no longer precludes designs which have no aesthetic quality, but that does not mean that designs dictated solely by technical function may gain protection either.

Recital 14 of the European Directive 98/71/EC reads:

Whereas technological innovation should not be hampered by granting design protection to features dictated solely by a technical function; whereas it is understood that this does not entail that a design must have an aesthetic quality; whereas, likewise, the interoperability of products of different makes should not be hindered by extending protection to the design of mechanical fittings; whereas features of a design which are excluded from protection for these reasons should not be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection.

The intention of Section 1C(1) of the Act is not to deny protection to all but aesthetic designs, but to avoid hampering technological innovation. It is useful to refer to the opinion of Advocate General Ruiz-Jarabo Colomer in the trade mark case of Philips Electronics NV v Remington Consumer Products Limited, Case C-299/99. At paragraph 34, he says:

The wording used in the Designs Directive for expressing that ground for refusal does not entirely coincide with that used in the Trade Marks Directive. That discrepancy is not capricious. Whereas the former refuses to recognise external features which are solely dictated by its technical function, the latter excludes from its protection signs which consist exclusively of the shape of goods which is necessary to obtain a technical result. In other words, the level of functionality must be greater in order to be able to assess the ground for refusal in the context of designs; the feature concerned must not only be necessary but essential in order to achieve a particular technical result: form follows function. This means that a functional design may, none the less, be eligible for protection if it can be shown that the same technical function could be achieved by another different form.

It may not be fatal therefore that all of the features of the design are dictated by function. The test would appear to be whether or not the technical function dictates the appearance of t he product to the extent that there is no (or negligible) design freedom. Where all of the features of the design would appear to be dictated by function, Examiners should therefore raise an objection under Section 1C(1). The applicant may successfully overcome this objection if they are able to demonstrate that there is sufficient design freedom in that the product need not appear to the exact design as shown in the application.

2. Section 1C - (2)

A right in a registered design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions so as to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to, or placed in, around or against, another product so that either product may perform its function.

Again, Recital 14 assists with interpretation. This section is more akin to ‘must-fit’ features, bearing in mind that ‘must-fit’ parts of a complete product have a limited scope of design freedom by their very nature. The question for an Examiner to ask should therefore be this. Is there any part of the design which is not required to be of the appearance it is, in order to enable it to fit the end product? If the answer is yes, then the design application should be allowed to proceed if it satisfies the other requirements for registration, in particular that it has individual character.

If the answer is no, and the design would appear to have no practical scope for alteration and still fit the end product, then it must be regarded as nothing more than a fitting, and objection would then be warranted. To give an example, a toner cartridge needs to match a particular printer, but if there is scope to change the design in a part of the toner cartridge that does not need to fit with the printer (perhaps the top part which you see immediately you take the hard casing away) then the design must be considered suitable for protection if it satisfies the other requirements for registration. But where you have a toner cartridge which is to be incorporated into a product other than a typical printer, and there is no such scope for any change in design, then objection will be warranted. Really this section of the Act is the mirror image of Section 1B(8) because component or consumable parts that are objectionable are likely to be visible in normal use.

3. Section 1C - (3)

Subsection (2) above does not prevent a right in a registered design subsisting in a design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system.

This is to provide for modular systems, and such features will normally be shape features, for example, concert seating that with its interlocking features provides for multiple assembly (which in itself is the primary purpose of such a product because it later enables easy disassembly and storage) or dual purpose products.

Recital 15 of the European Directive 98/71/EC reads:

Whereas the mechanical fittings of modular products may nevertheless constitute an important element of the innovative characteristics of modular products and present a major marketing asset and therefore should be eligible for protection.

This makes it clear that modular products should be differentiated from stand alone products and afforded design protection.

Any enquiries about this notice should be addressed to:

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom