The recent judgement of the General Court (T-574/19) TINNUS ENTERPRISES vs. KOOPMAN INTERNATIONAL et al. represents another piece of legal deliberation on the prohibition of registration for Designs that are solely dictated by their technical function.
For those not very familiar with the dynamics of design registration, this is a common prohibition in most legal systems at international level and such is the case of the Regulation EC No. 6/2002 on Community Designs, art. 8.1. The reason for this rule is to prevent holders from circumventing the substantive requirements or length of the monopoly that other modalities of Intellectual Property, more suitable for protecting these innovations, would provide e.g. patents or utility models.
Accumulation of IP rights is not, in general, excluded by the law but the very nature of these assets, as exceptions or legal monopolies in a market economy, should make IP owners carefully consider the use of this strategy, without encumbering the only reason for the existence of these monopolies: the promotion of the innovation.
In this context, the above-mentioned ruling recalls (and recasts) the teachings of another relevant ECJ decision of a couple of years ago, (C-395/16) DOCERAM, and that had provided some important guidance on how this prohibition should be interpreted.
In particular, until this ruling, the dominant criteria on the interpretation of the prohibition of Art. 8.1 RCD was the potential existence of alternative designs fulfilling the same technical function, thus this would mean that there is indeed creative room for designers on applying different aesthetical solutions, beyond the constraints of the technical function of the product. DOCERAM took this approach a step forward and established that this “potentiality” of alternative designs would not exclude by itself that they were dictated by technical needs too: objective circumstances were to be taken into account in order to assess the choice of theses visual features.
The above-mentioned ruling confirms the invalidity of this design, after concluding that the appearance of the product was based on features purely dictated by its technical function. Nevertheless, the relevance of this decision relies on the method of structured analysis that the Court presents for the assessment of this complex prohibition:
1.- Determination of the technical function of the product.
2.- Identification and analysis of the features of appearance of the concerned product.
3.- Examination of each of the features of appearance in order to determine if they were solely dictated by its technical function.
4.- Assessment of novelty and individual character of the design.
In a well-worth reviewing reasoning, the General Court goes through this sort of cascade of assessments but stopping at point 3, because it declares that all the visual aspects of this “fluid distribution equipment” respond solely to the technical requirements that the product is deemed to perform and, therefore, that suffices to assess the invalidity of the contested design.
Interestingly, with regard to the argument of the existence of alternative forms to perform the same function, the Court highlights the fact that the same holder had included on its RCD up to 4 different configurations of the tubes and balloons illustrated was leaving competitors with few options for achieving the same technical result. In short, the holder was trying to obtain a monopoly of the different technical embodiments of its fluid distribution equipment, concealing them as aesthetic features.
In the light of this judgment and before taking the plunge, IP owners should carefully consider whether they would be able to show evidences that the visual aspect of the product was definitory on the design process. This seems to be a quite straight forward question in many design areas, not as much in those where the product incorporating the design includes some technical base as well.
So, think twice and don’t ruin your dip!
Article by Joan Salvà.