The Community Designs Regulation

INTRODUCTION

The Designs protecting laws within the different member states of the European Union differed widely from each other. This inevitably caused conflicts in the course of trade between Member States. In the process of harmonisation of the European Community Single market, the Community design right was introduced [1] along with the existing rights [2] .

The Community Designs Regulation was adopted on 12 December 2001. [3] A Community Design has been categorised into unregistered Community design and registered Community design. The Council Regulation (EC) No.6/2002 on Community designs govern the community registered and community unregistered rights. [4] Unregistered Community design protection has existed since 6 March 2002 and registered Community design protection has existed since 1 April 2003. [5]

Enhanced protection for industrial design not only promotes the contribution of individual designers to the sum of Community excellence in the field, but also encourages innovation and development of new products and investment in their production. [6]

Post Harmonisation

The important changes in the registered designs are

The scope of infringement of registered designs widened, and the test of validity in relation to prior art been made correspondingly stringent, by the introduction of the concept “overall impression”. The comparison with the prior art or the alleged infringements are to depend upon a difference in ‘overall impression’.

Design registered for one product can now be infringed by the application of the design, or a similar one, to any product, in contrast, with the previous law which restricted infringement to application of the design to the same kind of article;

Designs can now be registered for parts of products, whether separable or not, in contrast to the old law, when registered designs applied to the design of an article as a whole. [7]

Pre-Requisites for Community Design Right Protection

The requirements which make a community design eligible for protection under the Regulation [8] are noted below before entering the topic.

The essentials to be protected as a Community design are detailed in Articles 4 to 9 of the Regulation. [9] They are

Novelty – If no identical design has been made available to the public before the date of filing of the application in case of registered Community design and before the date on which the intended design has been first made available to the public in the case of unregistered community design. [10] If the features differ only in immaterial details the designs are treated identical. [11]

Individual Character- It is assessed as from the position of the informed user. It is the difference in the overall impression it creates on the informed user between the design on hand and an earlier design made available to the public which attributes the individual character. The Designer’s degree of freedom in developing the design is also counted in assessing individual character. [12]

Disclosure- The disclosure of the design to the public, prior to its publication following registration in the case of registered community designs and prior to the claim of protection in the case of unregistered community designs makes it disqualified for protection [13]

Article 8 [14] and Article 9 [15] of the Regulation deals with the circumstances where community designs protection are not granted, ie designs dictated by their technical function and of interconnections and designs contrary to public policy or morality respectively.

These requirements if not complied with, will subject the community design to the grounds of invalidity given under Article 25. [16]

In the case of parts of complex products and an exclusion from protection of design features needed to interconnect with other parts of the product have special rules.

Now we have briefly seen the basic essentials required for the protection of the design under the Harmonised Regulation, let us analyse the decision of Linder Recyclingtech GmbH v Franssons Verkstader [17] and further the functionality and aesthetical aspect of articles.

Analysis of Linder Recyclingtech GmbH v Franssons Verkstader

In the case of Linder Recyclingtech GmbH v Franssons Verkstader [18] the respondent is the holder of the contested registered community design ‘chaff cutters’. The Appellant filed an application for a declaration of invalidity against the contested Registered Community Design pursuant to Article 52 of the Council Regulation (EC) No. 6/2002. The Appellants argument was based on the allegations that, the registered design of ‘chaff cutters’ was not novel, and doesn’t possess an individual character as required under the Article 4 to 6 of the Regulation, and further that the design was solely dictated by its technical function within the meaning of Article 8(1) of the Regulation. Hence it should be declared invalid under Article 25(1)(b) of the Regulation. The OHIM rejected the application for declaration of invalidity.

Further in the Appeal, it contested that the “chaff cutters being a component of a complex product, its invisible once in normal use along with the above grounds. The Court of Appeal interpreted in detail the Article 4 to 8 of the Regulation and held that the contested ‘chaff cutter’ must be declared valid under Article 25(1) as it was found that the all features of the product was solely dictated by the product’s technical function.

Reasoning for the decision

The interpretation of Article 8(1) of the Regulation is highly disputable. According to Article 8(1), the general rule is that, the designs shall not be protected if and to the extent that there is no “design alternative” for achieving the same technical effect. [19] The designer’s freedom to be creative is seized, if a design is solely dictated by functionality.

The clause (2) of Article 8 excludes protection for “must-fit” features of the product. Precisely the elements and parts which are essential to be reproduced in the exact form and dimensions for the effective functioning of the product. The product can be in which the design is incorporated, or mechanically connected, or positioned around or against another product. [20]

Article 8 (3) contains an exemption from the must-fit exemption with respect to modular products. This rule has become known as the “ Lego- exemption”. [21] Whereas the permission to reproduce must-fit elements normally only gives access to markets for spare parts and accessories while reserving the market for the main product to the designer. It is the objective of Art. 7 (3) to prevent the capture of market by third parties, if the interconnecting elements are such that they meet the normal requirements f or design protection. [22]

In this case the judge has discussed two views to interpret the Article 8 (1) of the Regulation. One vies is the Multiplicity of forms theory which contends that , if the designer has two or more options as to the configurations of as to achieve the technical function, the exception of Article 8(1) cannot be applied.

This multiplicity of forms theory has been adopted by the courts in the United Kingdom in various decisions. It was seen that the multiplicity of form theory will not fulfil the purpose of the Regulation. The purpose of the Article of the Regulation is to prevent the design law from being used to achieve monopolies over technical solutions. The alternative for the multiplicity of form theory has its inception in the case of Amp v. Utilux [23] that the concept of design “dictated solely by function” was first interpreted. This case was an infringement action of a design for electrical terminals used in the washing machines. The defendant argued that the design was invalid on various grounds and contended that it was solely dictated by function and that it had no ‘eye appeal’ as it was fixed inside. House of Lords held that it was function that was the designer’s interest and at the same time the design did not intend to appeal the eye of the end customer .It was further held that “A design will be registrable when only some of its features are functional and other have eye appeal- the exclusion only operates when a design is wholly functional .Thus it was held that the electrical terminals design was not registrable as they will be judged by performance and not by appearance.

Thus it is understood that the stand then as interpreted by the court was, if every feature of the design is attributable to the function that the product is to perform, and it is not intended to appeal the eye, then the article will not be protected by design registration.

In the case of most of the good designs, the designer will be bothered about both the functional and aesthetic elements. The new regulation doesn’t provide any requirement as to the aesthetic merit, and even more, the absence of such a requirement has been specifically mentioned in the 10th Recital in the preamble of Regulation No.6/2002. It cannot be interpreted that, the absence of the requirement of ‘aesthetic merit’ means only functional designs are protectable. In the Same Regulation the definition of Design stands for

“the appearance of the whole or part of a product resulting from the features of in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation” [24] .

It is evident from this definition that the features of the product which constitute the appearance of the product in whole or part is intended to be protected. The features like, lines, contours, colours, shape, texture or rather touch, all these form the appearance of the product.

The concern of the design protection with appearance is further emphasised by Recital 10 of the Directive, which reads

“Whereas protection is conferred by way of registration upon the right holder for those design features of a product, in whole or in part, which are shown visibly in an application and made available to the public by way of publication or consultation of the relevant file;”

The aim of the industrial design law, is not to encourage the development of new technologies, but rather to encourage the development of new technologies. [25] The technical features which are not protected by the Patent Law are open to all, and thus the public interest is promoted. This forms the fundamental principle of design law. Even in the Article 8 (1) it has been clearly provided that designs which are purely functional will not be registered and further protected. It is only when aesthetic considerations are completely ignored the features of the design are solely dictated by technical function.

According to functionalism, the best designs are those in which the appearance comes from the structure and is a true logical expression of it. Functionalism is concerned specifically with aesthetics. [26] Further the Judge reasoned that “If the law were intended to protect purely functional designs it would not be logical to exclude the non visible aspects of design from 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.”

Further it can be found that the justification for the non- functionality requirement is that the external appearance of the article- and not its functional aspect is protected in design law. [27]

So i agree that it is a false analysis to interpret that the law just protect the purely functional designs, as it doesn’t evidently require aesthetic merit or artistic creativity as requirement for design protection.

Functionality and Aesthetic Factor

The functionality factor and the aesthetic factor can be analysed on how the courts have interpreted them. This can be done in two stages ie, Status quo Pre- 2001 and Status quo Post-2001.

Status Quo Pre-2001

Prior to the 2001 Designs the distinction between eye appeal and functionality has given rise to much complex and entertaining litigation. Under the 1949 Act, the eye appeal was an essential. There were various cases in which registration was granted on the basis of eye appeal and it was upheld by the Court. Some of them are In Ferrero and CSPA’s Application [28] the aesthetically- eye appealing matter as inside of a chocolate egg, in another Casio display watch [29] and yea another the ribbing on a hot water bottle. [30]

In Telecamit v. Ewarts [31] , the plaintiff made a lubricating nipple with a chamfered hexagonal nut. It cannot be registered to obtain a monopoly of all such nipples that was intended meaning of “mere mechanical device”.

The Functionality Factor is of utmost importance in determining the scope of protection of the Council Regulation. It existed even in the Registered Designs Act 1949 of the UK. The Act adopted the wording “dictated solely by function” from Kestos v Kempat. [32] Further it was included in the Design Directive and later that rule was adopted in the Council Regulation for Community Designs. [33] Under the Trips Agreement, Article 25(1) [34] , Member states are entitled to deny protection to “designs” dictated essentially by technical or functional considerations, thus making it convenient for the European Union and its members to be consistent with the international obligations. [35]

In Lamson Industries Inc.’s Design [36] an interesting case, bringing alive the meaning of “ judged solely by the eye” in the context of a pattern design , where there is no statutory exclusion of features dictated solely by function. The product was a computer printout paper on which the “staves” of fine lines, instead of being all one colour, were in alternating shades of green and orange. Apart from the eye appeal, it had the virtue of making the printout legible thereby allowing the staves to be printed closer together, getting more material on one page and cause higher price per page. The Judge held that this “ pattern was eye appealing, and would readily be registrable for something like wallpaper, but could not be accepted for printout paper because the purchaser would choose that not for the pleasing pattern but only for reason of economy.”

In Kevi A/S v. Suspa-Verein UK Ltd [37] Falconer J. Said that the eye of every customer in distribution chain needed to be taken into account in assessing eye- appeal, so that a registered design for office furniture castors must be looked at successively or trifocally through the eyes of the furniture manufacturer, the shopkeeper selling the furniture and the ultimate purchaser, each of whom might notice different things about them.

In a Patents County Court decision [38] the teardrop shaped squash racquets it was reaffirmed that it is the customer/ user’s eye that counts, not that of a designer familiar with the engineering or manufacturing requirements, nor that of a tennis historian attracted by unconventional design features.

Later in the Commission Green Paper of 1991 [39] it was proposed that “If a technical effect can be achieved only a given from, the design cannot be protected. On the other hand, if the designer has a choice among various forms in order to arrive at the technical effect, the features in question can be protected.

Lord Oliver, in Interlego v. Tyco [40] reiterated the functionality exclusion of design and further held,

“ The incorporation into the shape as a whole of some ( perhaps a majority of) features dictated solely by functional requirements will not bring the exclusion into operation so as to deprive it of protection, if there are also some features of the shape which are not attributable solely to function. [41]

Thus if a design comprises both characteristics which appeal to the eye and which are dictated by technical function, then the design as whole is capable of registration.

Silverlit Toys Manufactory LTD v Ditro [42] was a preliminary injunction action regarding the alleged infringement of a Registered Community Design of a toy helicopter rotor. The defendant responded by counterclaiming the cancellation of the registered design on the basis that the RCD lacked novelty and that the features of appearance of the design were solely dictated by its technical function.The court first considered as to whether a counterclaim seeking the cancellation of a RCD was admissible in the context of a preliminary junction hearing. The court concluded that it was on the basis that the validity of a registered design must be established before the grant of an injunction can be considered. Further it was held that the disclosure of a design to certain officials for the purpose of obtaining a marketing certification does not constitute disclosure under Article 7 of CDR Art 7.With regard to the allegation that the features of the design were dictated solely by their technical function, the court held that if any other design can carry out the same technical function, then design is not solely dictated by its technical function. The court was satisfied that in this case there were other potential designs which could perform the same technical function. Accordingly, the court concluded that the plaintiff’s RCD was valid and therefore was prepared to grant the sought interim injunction.

Post 2001

In ECJ, Philips Electronics NV v. Remington Consumer Products Ltd [43] , The Advocate General while contrasting a trademark exclusion with the design exclusion, opined that “a functional design may… be eligible for protection if it can be shown that the same technical function could be achieved by another different form.” [44] The Court of Justice further commented about the earlier rule of functionality ‘pursues an aim which is in the public interest, namely that a shape whose essential characteristics perform a technical function and were chosen to fulfil that function may be freely used by all. [45]

The functionality exclusion was supported by the Court of Appeal, in unregistered Community Design Case of Landor & Hawa International Ltd v. Azure Designs Ltd. [46] This was an appeal by the defendant from the decision of the Patents County Court. The respondent company created a suitcase known as the Landor Expander Design. The design related to an arrangement of piping and zippers comprised in the “expander” section of the suitcase, whereby the capacity of the case could be increased. [47]

The Recital 10 of the Community Design Regulation is relied upon

“Technological innovation should not be hampered by granting design protection to features dictated solely by a technical function. It is understood that this does not entail that a design must have an aesthetic quality.” [48]

The interpretation of Article 8(1) was dealt in Landor v. Azure [49] .Copinger however, commented as follows:

“… it is unclear whether the exclusion will only apply to a design if that is the only design by which the product in question could perform its function or whether it operates whenever a design was as a matter of fact dictated solely by the function of the product even though it was not the only design that was capable of allowing that function to be performed. Although English authority regarding the similarly worded exclusion in s.1(3) of the Registered Designs Act 1949 (prior to its amendment by the CDPA 1988) favoured the latter construction, that construction had been the subject of much criticism and it is submitted that the former (narrower) construction of Article 8(1) is the correct one. In this regard, the wording of recital (10) is again significant; whilst it provides that “[t]echnological innovation should not be hampered by granting design protection to features dictated solely by a technical function”, it also provides that “[i]t is understood that this does not entail that a design must have an aesthetic quality”. This suggests that the technical function exclusion was intended to be construed narrowly and that it should be construed in a way that does not unduly restrict the availability of protection for non aesthetic (i.e. functional) designs.”

The Court of Appeal addressed the issue “Whether the design constituted “features of appearance of a product which are solely dictated by its technical function,” falling within the exclusion in Article 8(1) of the CDR (6/2002/EC)? [50] The Court held that the lower court was right to draw support from the Recital 10 of the CDR and upheld that the design is protected under European Union law. In Landor v. Azure a very narrow approach to the provision of Article 8 (1) was adopted.

Invalidity Decisions

Dr Oetker Polska v Zaklad [51]

In a more recent decision 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’.

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.

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.

Ampel 24 Vertriebs-GmBH &Co KG v. Daka Research Inc

The Ampel 24 Vertriebs-GmBH &Co KG v. Daka Research Inc [52] was concerned with Community Design for an ‘underwater motive device’. The invalidity challenge was based on Novelty and that most of the features are solely to perform the technical function. It was held that although novel, the design lacked individual character and its registration was invalid.

Silverlit Toys Manufactory Ltd [53] filed an application for a declaration of invalidity, claiming that the Community design infringed its rights in the design of a toy mini-helicopter, which was registered as a Hong Kong design and released on the EU market and worldwide in early

Comparing the designs, OHIM found that the main and tail propeller elements were very similar whereas the other design elements showed some differences which are immaterial and that the two designs cannot be said identical. [54]

Therefore it was found that the Community design did not lack novelty further OHIM foun