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January 2010

Designs solely dictated by technical function

A short time ago the Third Board of Appeal declared a Community design invalid because it was found to be solely dictated by the technical function of the product in which it is incorporated (see the report in Alicante News of November). In a more recent decision1 the Third Board of Appeal gave further explanations as to the interpretation of the related Article 8(1) of the Community Design Regulation (CDR).

The new decision concerns a registered Community design (RCD) which has been registered for ‘packaging for foodstuffs' with the following design:

The validity of the RCD (No. 273644-0001) was contested by an application for a declaration of invalidity wherein the applicant submitted as evidence a number of patent publications, inter alia an extract from the Bulletin of the Polish Patent Office relating to patent application No 358 653 containing the following drawing,

 

 

and the following description: ‘bag especially for foodstuffs, having two sidewalls, each sidewall with internal surface and external surface characterized in that it has internal wall (4) and internal wall has surfaces that both are internal surfaces (3) and it connects at least to one internal surface (3) of sidewall (1).'

The Third Board found that “it is impossible to determine on the basis of the above drawing and description whether the Polish patent application and the RCD relate to the same product or not, since the drawing does not reveal the existence of twin compartments, which is clearly a characteristic feature of the RCD. The accompanying description, at least in the English version provided by the applicant, is difficult to make sense of. It might describe the RCD or it might describe a different package. It is in any event not certain that the RCD would have to be declared invalid solely because it related to the same product as a patent application.”

However, the Board went on examine the extent to which the disputed design was dictated by functional considerations.

The Third Board explained that “Article 8(1) CDR 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 is not necessary to determine what actually went on in the designer's mind when the design was being developed. The matter must be assessed objectively from the standpoint of a reasonable observer who looks at the design and asks himself whether anything other than purely functional considerations could have been relevant when a specific feature was chosen (see Decision of 22 October 2009 in Case R 690/2007-3, ‘Chaff cutters', at paragraph 36).

The fact that a particular feature of a product's appearance is denied protection by Article 8(1) CDR does not mean that the whole design must be declared invalid, pursuant to Article 25(1)(b) CDR, on the ground that it does not ‘fulfil [one of] the requirements of Articles 4 to 9'. The last sentence of the 10th recital in the preamble to the Regulation makes it clear that the design as a whole may be valid even though certain features of the design are denied protection. 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.

It is difficult to see anything in the RCD that could have been influenced by anything other than the need to design a pouch, of convenient dimensions, that would be a practical means of packaging certain types of processed food, in particular when two portions or two separate lots of ingredients have to be put in a single packet for sale to the end consumer. The basic shape and dimensions of the RCD correspond to the existing paradigm for such products. Those features are functional in the sense that they are imposed by the norms of the marketplace. The technical function this type of product is to package certain foodstuffs in a manner that is acceptable to consumers. The twin compartments are functional because without twin compartments it would be impossible to put two portions or two separate lots of ingredients into the same package. The flap at the base of the RCD is not arbitrary. It is there for a purpose, namely to facilitate tearing the package open. The rounded edges visible at the top and bottom of the pouch correspond to the norm for this type of product. Such pouches normally bulge at the centre because that is the simplest and most obvious shape for them to have. A pouch could of course be square or octagonal or have some other shape. Such shapes would, however, be more expensive to manufacture and might encounter consumer resistance because they would depart from the norm. A rounded shape is clearly the most functional. All the essential features of the RCD 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.”

The Third Board came to the conclusion that the RCD must be declared invalid under Article 8(1) CDR.

1 Decision of Third Board of Appeal of 12 November 2009 in the case R 1114/2007-3