Fathoming functionality for designs
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Fathoming functionality for designs

AIPPI_rio_designs_crop

Panellists were invited to “tame the beast” of functionality in a panel on industrial designs, which also served as an appetiser ahead of the Working Question on design functionality scheduled for debate at next year’s AIPPI Congress in Milan

AIPPI designs EU
AIPPI designs US
AIPPI designs BR
AIPPI designs China

Design law is one of the least harmonised areas of IP, not least in the terminology used, Chris Carani of McAndrews Held & Malloy said. One issue that continues to cause difficulty is the exception, common to most laws, that covers functional attributes. Speakers from the United States, China, Brazil and the EU discussed various cases where functionality had been addressed (see images).

These cases raise two policy questions regarding functionality, said Carani: first, what is the test to establish whether a design is eligible for protection? And, second, what is the scope of protection when particular elements of a design are dictated solely by function – should any aspects of the design be disregarded?

On the first, as Sara Ashby of Redd Solicitors in the UK illustrated, many tests have been proposed, including the multiplicity of forms theory, the alternative designs theory, the aesthetic consideration test and the primarily functional test. She discussed the Lindner v Franssons case, concerning industrial cutters, where the OHIM 3rd Board of Appeal said that a design is functional if its “characteristic features” pursue a purely technical function.

Carani said that in the US there has only been one case where the Federal Circuit has found that a design was solely dictated by function: it concerned a key blade where only the blade itself was claimed. In Brazil, said Lucas Gaiarsa of  Gaiarsa Ferreira & Meyer, the statutory exceptions are clear, but he added: “The law is there but the application is not always something you understand ­completely.”

On the second question (whether to disregard aspects of the design in infringement cases), Lila Wu of CCPIT Patent and Trademark Law Office said China’s courts had been clear that “any design feature with technical function should not be considered and should be removed from the comparison of infringement”. As an example, she cited a case involving an electrical power unit, where the plug holes were held to be functional. Ashby pointed to a European dispute involving a Dyson vacuum cleaner, where a transparent bin was held to be functional (it lets you see the dirt).

Cases such as these could be examples of where “claim construction ends up being claim destruction”, said Carani. The discussion demonstrated, he added, that there is no clarity on this topic: “Hopefully AIPPI can help.” The Working Question next year is expected to cover all the relevant policy issues and tests and it may even be necessary to ask the fundamental question “Do we need a functionality exception and what are we trying to prevent?” said Carani.

more from across site and ros bottom lb

More from across our site

Lawyers in the corporate and IP practices discuss where the firm can steal a march on competitors, its growth plans in London, and why deal lawyers are ‘concertmasters’
Kathleen Gaynor, DEI specialist at Phillips Ormonde Fitzpatrick, says deliberate actions can help law firms reach diversity goals
Scott McKeown, who moved to Wolf Greenfield one year ago, says the change has helped him tap into life sciences work and advise more patent owners
The winners of our Asia-Pacific Awards 2024 will be revealed during a ceremony in Malaysia on September 26
Zach Piccolomini of Wolf Greenfield explains how to maximise your IP portfolio’s value while keeping an eye on competitors
Witnesses at a Congressional hearing debated whether reforming the ITC is necessary and considered what any changes should look like
In the first of a two-part UPC special, lawyers at A&O Shearman explain what you need to know about changes of procedural language and security for costs
Lawyers in the US and Europe reveal the work they focus on, how they stay one step ahead of creative counterfeiters, and why reputation matters
Abion said the appointment of Silvia Asioli and the launch of its Milan office will expand its market position in southern Europe
UK firms who have hired litigation and transactional lawyers reveal how they work together and the lessons have they learned
Gift this article