Patent Office issues practice notice on registration of designs

The UK Patent Office has issued a practice notice that outlines how examiners are to apply the restrictions on the registration of designs of a functional nature in light of the European Court of Justice's (ECJ) decision in Philips v Remington.

The Registered Designs Act 1949 (as amended by the Registered Designs Regulations 2001, which in turn implements the EU Design Rights Directive) provides that a product whose appearance is solely dictated by technical function may not be registered as a design. In a similar vein, the Community Trademark Directive provides that a shape that has a purely technical function may not be registered as a trademark. These provisions are respectively known as design exclusion and trademark exclusion.

In his opinion in the Philips Case, Advocate General Colomer made the following distinction between design and trademark exclusion:

"Whereas the former refuses to recognize external features which are solely dictated by their technical function, the latter excludes from its protection signs which consist exclusively of the shape of goods which is necessary to obtain a technical result. In other words the level of functionality must be greater in order to be able to assess the ground for refusal in the context of designs; the feature concerned must not only be necessary but essential in order to achieve a particular technical result [...] a functional design may, none the less, be eligible for protection if it can be shown that the same technical function could be achieved by another different form."

The notice adopts this view, explaining that it may not be fatal that all of the features of the design are dictated by function. The test appears to be whether the technical function dictates the appearance of the product to the extent that there is no (or negligible) design freedom.

While the notice does not elaborate on trademark exclusion, the ECJ further commented on the contrasting position of shape marks in Philips. The ECJ held that registration of a mark can be refused "if it is established that the essential characteristics of the shape of the product are attributable only to a technical result" and it is immaterial how many other shapes can achieve the same technical result. The ECJ states that the trademark exclusion "is intended to preclude the registration of shapes whose essential characteristics perform a technical function [...]". Accordingly, the requirement of necessity referred to in Colomer's opinion and in the Community Trademark Directive itself appears not to be part of the ECJ's formulation of the key issue, except in as much as the reference to "essential characteristics" conveys a similar meaning.

The notice also outlines the 'must-fit' limitation and the exception made to that limitation for modular systems, such as shelving arrangements or interlocking seating systems.

Mark Lubbock, Ashurst Morris Crisp, London