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Designs Solely Dictated by Technical Function
For the first time ever, a Community design has been declared invalid because it was found to be solely dictated by the technical function of the product in which it was incorporated.
The decision 1 , issued by the Third Board of Appeal, concerns the registered Community design (RCD) No. 253778-0001 for chaff cutters as shown below:
A chaff cutter is a metal cylinder, with knives attached, which rotates and thus cuts up the material that is fed into a machine for shredding used paper, cardboard, plastic, glass, and so forth, for recycling purposes. A typical example of such a machine is the shredder shown here:
The shredder has a large, square collector unit, located in the upper part of the shredder. The material is fed into that collector and falls down on to the step rotor which spins round and shreds the material, which is then ejected somewhere at the side of the machine.
Firstly, the Board had to decide whether the contested RCD must be declared invalid because it was not visible in normal use. From the submissions of the parties it became apparent that the step rotor was not visible to the person operating such a machine if he or she were standing on the ground with their feet at the same level as the base of the shredder. However, the Board found that the evidence suggested on balance that the step rotor would, at least to a limited degree, be visible in normal use and hence the Board concluded that the requirements of Article 4(2)(a) CDR were satisfied since that provision does not require a component part to be clearly visible in its entirety at every moment of use. It is sufficient if the whole of the component can be seen some of the time in such a way that all its essential features can be apprehended.
Secondly, the Board had to decide whether all the features of the contested RCD's appearance were solely dictated by the product's technical function within the meaning of Article 8(1) CDR. The Board observed that the interpretation of Article 8(1) CDR was highly controversial. “Two contrasting views have been canvassed in the legal literature. One view holds that a technical necessity exception, such as that contained in Article 8(1) CDR applies only if the technical function cannot be achieved by any other configuration; if the designer has a choice between two or more configurations, the appearance of the product is not solely dictated by its technical function.” The principal alternative to that approach was described by the Board as an interpretation which denies protection to the features of a design “if every feature of the design was determined by technical considerations.” The Board saw support in the alternative interpretation by the wording of Article 8(1) CDR. “That provision 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.” Furthermore, the Board believed that Article 8(1) CDR was meant to deny protection to those features of a product's appearance that were chosen exclusively for the purpose of designing a product that performed its function, as opposed to features that were chosen, at least to some degree, for the purpose of enhancing the product's visual appearance.
At the end, the Board came to the conclusion that “every essential feature of the design has been chosen with a view to achieving the best possible technical performance. Those features were therefore solely dictated by the product's technical function. It follows that the contested RCD must be declared invalid under Article 25(1)(b) in conjunction with Article 8(1) CDR.”
Decision of Third Board of Appeal of 22 October 2009 in the case R 690/2007-3