Designs in the spotlight


Designs in the spotlight

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Designs might not receive as much attention as other areas of IP, but they should not be forgotten, especially in light of recent case law developments, says Anne Marie Verschuur of AIPPI.

Designs might not receive as much attention as other areas of IP, but they should not be forgotten, especially in light of recent case law developments, says Anne Marie Verschuur of AIPPI.

When asked what the ‘classic’ IP rights are, one would probably mention patents, trademarks, copyrights and … designs. For some reason, and for a long time, designs have not received as much attention as the other rights. More and more though, the value of designs is now being acknowledged and the attention they attract is increasing accordingly.

The worldwide Apple v Samsung litigation, in which not only patents but also designs play an important role, is a good illustration of this. It was thus very timely that at its World Congress in Milan in 2016, the International Association for the Protection of Intellectual Property (AIPPI) adopted a resolution on designs law, which focused on functionality in particular—one of the most difficult and interesting issues.

Before taking a closer look at this AIPPI resolution, let us first take a step back to consider what is so special about designs. Appreciating that there will be differences between various jurisdictions, the general theme of designs is that they have a unique position between protection of technology and purely aesthetic design. They do not protect technology as such, but may have some technical aspects.

Unlike trademarks, designs do not need to function as an origin indicator, but like trademarks, they do have the attraction of being a registered right (although in some jurisdictions unregistered rights may also exist). With 3D/shape trademarks being increasingly under attack (case law in, eg, the EU, has become stricter in the past few years), designs are an increasingly attractive right. This is validated by the number of applications: numbers in the EU, eg, continue to rise, with 103,234 in 2016 alone. The number of international industrial design applications filed is also increasing.

AIPPI, dating back to 1897, has always covered the broad range of IP rights, including designs; AIPPI’s first resolution on designs was adopted in 1960. AIPPI’s designs committee is thriving, and at the annual AIPPI Congress, designs-related topics are a regular feature on the programme. Early in 2016, recognising the interest in designs, AIPPI and INTA organised a two-day conference dedicated purely to designs in Singapore. And, as mentioned above, AIPPI’s latest designs feat is its recent resolution on designs with a special focus on functionality.

Limits to protection

Looking at functionality, and considering that designs may have some technical aspects, it is important to clarify that there are limits to what designs can protect. As in trademark law, design laws contain a functionality exception in many jurisdictions. Briefly put, unlike a patent, a trademark or design is not intended to provide a monopoly in relation to certain technology.

However, where there is a functionality exception in trademark and designs law, the exception should not, at least not automatically, be assumed to be of the same scope, for a number of reasons. First, trademark protection is potentially unlimited in terms of time. Second, the object of protection is different. Designs protect the outward appearance of an object or article of manufacture, while trademarks are essentially origin indicators.

Arguably, this means that the test for excluding functional trademarks from protection should be stricter and applied more readily than in the case of denying protection to functional designs.

The functionality exception in designs law usually entails that the protection does not extend to a design or features which are solely dictated by technical function. In other words, if a design as a whole is functionally determined, it is invalid; and if a feature is solely dictated by its technical function, it should be excluded from the scope of protection. This may sound clear enough.

However, in practice the rule is not so simple. How does one establish whether something is solely dictated by function? Does one look at the intention of the designer? At the availability of alternatives? In the latter case, how many alternatives should be available and/or does it matter whether they are realistic (from a practical and/or economic perspective)?

Designs resolution

All these questions and more were considered by AIPPI in the process leading up to its 2016 designs resolution. AIPPI’s unique and thorough process started, as always, with the preparation of guidelines setting out the issues in relation to the topic as well as a detailed set of questions. Those were then sent to AIPPI’s members, who returned responses detailing the law in countries all over the world. Importantly, the responses do not only indicate what their present law states, but also what the law should ideally look like.

Next, a summary of the responses was prepared, which formed the basis for the preparation of a draft resolution. The draft resolution was then discussed at the annual Congress in Milan, and eventually led to a final resolution adopted by AIPPI’s executive committee at the Congress.

The majority of the reports received confirmed that the respondents’ current laws deny protection to a design with an appearance that is dictated solely by function. However, the test to assess whether this is the case turned out to be difficult to pin down. One test mentioned was the so-called multiplicity of forms theory, in which the availability of alternative appearances to obtain the same functional result is relevant: if alternatives exist, a feature is not “solely dictated by function”.

"The functionality exception in designs law usually entails that the protection does not extend to a design or features which are solely dictated by technical function."

Others mentioned that one should assess whether the need to achieve the product’s technical function was the only relevant factor when the feature in question was selected. On what the effect of the presence of a functional feature should be on the scope of protection, different opinions were again voiced.

Following discussion during the Congress, the resolution was eventually adopted. Among other things, it states:

“The assessment of whether the appearance of a product should be considered dictated solely by its technical function should include at least:

(a)    Whether there is no alternative appearance for the product that would obtain substantially the same technical function; and optionally

(b)    Whether the need to achieve the technical function of the product was the only relevant factor when the appearance of the product was arrived at.”

And also: “In the assessment of the scope of protection of a registered design, no visual portion of the appearance of the product should be excluded from consideration, even if the appearance of any such portion is dictated solely by the functional characteristics or functional attributes of any such portion of the product, but such portions may be given less weight in the assessment. While the functional characteristics or functional attributes of any such portion should not be protected, all visual aspects of such portion, including its size, position and spatial relationship relative to the appearance of the product, should be taken into account when assessing the scope of protection of the registered design.”

However, AIPPI’s work in relation to designs is far from finished. Under the leadership of the designs committee chair, Christopher Carani, a new volume of the AIPPI Law Series is underway, continuing the study of the role of functionality in designs law in more detail.

And also case law continues to develop. 2016 was the year of the first design decision of the US Supreme Court in 123 years (Samsung v Apple). While it has not been nearly that long in the EU, an important decision on the role of functionality in designs law is expected soon, with questions having been referred to the Court of Justice of the European Union (see Doceram v CeramTec).

Concluding, it seems much more can be expected in the area of designs law in the coming years and AIPPI certainly aspires to continue to be at the forefront of that.

Anne Marie Verschuur is second deputy reporter general at AIPPI and heads the Dutch IP/IT group of law firm NautaDutilh. She specialises in IP law and has extensive experience in litigating and advising in this area. Most of her clients are national or international corporations active in the consumer goods (in particular food, clothing and luxury goods), biotechology and healthcare and life sciences industries. She can be contacted at:

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