Author: Neil Thomson
13 March, 2018
In a ruling published last week, the CJEU has provided clarification as to when features of appearance of a product are solely dictated by the product’s technical function. A copy of the ruling can be found here.
Under EU legislation, Registered Community Design (RCD) protection is excluded for features of appearance of a product which are solely dictated by the product’s technical function. The sticking point to date has been in determining the scope of this so-called ‘technical function’ exclusion, specifically in terms of when the features of appearance of a product are solely dictated by the product’s technical function.
To date, there have been two different approaches for interpreting the scope of this exclusion. The first approach is the “multiplicity of forms” approach, which effectively states that if the features cannot be shaped differently to achieve the intended technical function of the product, then the features fall within the technical function exclusion. The second approach is the “no-aesthetic consideration” approach, which states that the exclusion applies when only technical considerations were behind the appearance of the features from the product.
In its ruling, the CJEU has concluded that to determine whether the features of appearance of a product are solely dictated by the product’s technical function, it must be established that the technical function was the only factor which determined those features. In making this determination, the CJEU has expressly noted that the existence of alternative designs is not a decisive factor, and that one must take into account all objective circumstances relevant to the case. For example, a relevant factor would be evidence showing that the designer was interested in the aesthetics of the product when creating the design.
In the ruling the CJEU hints that the use of the second, “no-aesthetic consideration”, approach will, in future, be the appropriate test for determining when the technical function exclusion applies. However, they note that each case will turn on its particular facts.
In light of this ruling from the CJEU, when obtaining RCD protection for features of a product which are potentially covered by the technical function exclusion, we recommend the creation/preservation of evidence during the product’s development which shows that the appearance of these features was affected in some way due to aesthetic considerations.
In addition, where valid RCD protection is critical for features which are potentially covered by the technical function exclusion, consideration should be given to limiting the RCD with additional aesthetic parameters, such as colour, shading, and/or surface decoration.
Alternatively, one should consider submitting a primary RCD without these additional parameters along with additional RCDs containing one or more additional parameters, so that the additional RCDs can act as fall back positions in case the primary RCD is considered to lie within the exclusion.
If you would like further information on the implications of this ruling from the CJEU, please speak to your usual Boult Wade Tennant adviser.