Technical function v. design in the law on design

The law on design always creates friction between the technical (functional) aspects of a user model and freedom of design. The law on design offers no protection for external features that are solely dictated by their technical function. This rule is unclear and generates a lot of debate. After all, when is an external feature only determined technically? For instance, is the design of an on-off switch for a lamp never protected, as it always has a technical function? Or does restriction of protection maybe only apply if there’s little or nothing available in the way of alternative shapes? It’s a never-ending debate.

The European Court of Justice offered some clarification in the recent Doceram judgment (about a “weld centring pin”, example on the right). If an external feature is purely the result of functional considerations, then that feature is not protected. The Court held that it was not decisive whether any alternatives could be thought up. The judge has to examine whether the visual aspect (e.g. the shape chosen for the button) played its part in the design. This doesn’t seem to me to be a particularly easy job: what the judge has to do is look at it with the designer’s eyes. Did the designer deliberately opt for this specific design? If so, it’s (possibly) protected. Otherwise not, even if all sorts of alternative shapes could be imagined.

Anyone who’s relying on a design right with technical elements must therefore make it crystal clear why a specific design has been chosen. For instance by showing that a number of different shapes of button were considered during the design process, but that this specific one was finally selected. (Because it’s so pretty, of course, not because it sits so easily under the index finger!) This doesn’t mean, however, that the designer’s subjective intention will be decisive. At the end of the day, the court has to consider “all the circumstances of the case”. The mere fact that the designer says the design of the on-off button was chosen (partly) because of the visual aspect will probably not be enough.

Bram Duivenvoorde, lawyer design law

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