"The features of the design for which novelty is claimed reside in the shape a nd c onfiguration applied t o t he arti cle as shown in the representations. "
"Article 1 Definitions For the purpose of this Directive: (a) 'design' means the appearance of the whole or a part of a prod uct resulting from the fe atures of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation; (b) 'product' means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs; ..... Article 3 Protection requirements ..... 2. A design shall be protected by a d esign right to the extent that it is n ew and has individual character. ..... Article 4 Novelty A design shall be considered new if no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority. Designs shall be deemed to be identical if their features differ only in immaterial details. Article 5 Individual character 1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs fro m the overall impression produced on such a user by any design which has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority. 2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration. ..... Article 7 Designs dictated by their technical function and designs of interconnections 1. A design right shall not subsist in features of appearance of a product which are solely dictated by its technical function. ..... Article 9 Scope of protection 1. The scope of the protection conferred by a design right shall include any design which does not produce on the informed user a different overall impression. 2. In assessing the scope of protection, the degree of freedom of th e designer in developing his design shall be taken into consideration. "
"In this Act ' design' means features of shape, configuration, pattern or ornament applied to an article by any industrial process being features which in the finished article appeal to and are judged by the eye... "
"Except in the case of an application to register the pattern or ornament of a design to be applied to a textile article, to wallpaper or similar wall covering or t o l ace or to sets of textile artic les or l ace, a st atement satisfactory to the registrar of th e fea tures of the design for w hich novelty is claimed shall appear on each representation or a specimen of the design. "
"It is important because it defines the scope of the monopoly claimed. While the court does not have to assume that it is correct, it precludes the proprietor, who has obtained his registration on the grounds that certain features of the design give novelty to it, from thereafter denying their novelty and asserting their immateriality, so as to extend the scope of the protected design. "
"This does not mean that it is permissible wholly to disregard the other features of t he des ign as s hown in th e ill ustration; th e statement of novelty direc ts speci al a ttention to t he part or parts of the design identified in the statement of novelty, but it w holly misconceives the purpose of such a statement to read it as if restricting the design to only those features specified. "
"It must be found that the informed user is neither a manufacturer nor a seller of the products in which the designs at issue are intended to be incorporated or to which they are intended to be applied. The informed user is particularly observant and has some awareness of the state of the prior art, that is to say the previous designs relating to the product in question that had been disclosed on the date of fili ng of the c ontested design, or, as the case may be, on the date of priority claimed"
"46. With regard to the interpretation of the concept of informed user, the status of ' user' implies that the person concerned uses the product in which the des ign is incorporated, in accordance with the purpose for which that product is intended. 47. The qualifier 'informed' suggests in addition that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them. 48. However, contrary to what the applicant claims, that factor does not imply that t he i nformed user is able to disti nguish, beyond the experience gained by usi ng the product concerned, the aspects of t he appearance of the product which are dictated by the product's technical function from those which are arbitrary. "
".... It follows from Article 36(6) of Regulation 6/2002 that, in order to ascertain the product in which the contested design is intended to be incorporated or to wh ich it i s in tended to b e ap plied, th e re levant indication in the application for registration of that design should be taken into account, but also, where necessary, the design itself, in so far as it makes clear the nature of the product, its intended purpose or its fu nction. Taking in to a ccount t he design its elf may enab le the product to be placed within a broader category of goods indicated at the time of registration and, therefore, to determine the informed user and the degree of freedom of the designer in developing his design. "
"The question is therefore: is the appearance of Land or 1 s design solely dictated (i. e. driven without option) by the technical function? In my view, the answer is "no"
"The judge's conclusion as to the ambit of Art. 8.1 is consistent with the views expressed by the editors of Copinger & Skone James (op cit) at para. 13-208. It is true that it is there said that it is not clear whether the exclusion in Art. 8.1 'will only apply to a design that is the only design by which the product in question could perform its function or whether it operates whenever a design was as a matter of fact dictated solely by the function of the product even though it was not the only design that was capable of allowing that function to be performed'. However, the editors go on to 'submit... that the former (narrower) construction of Article 8.1 is the correct one'. They draw support, rightly in my view, from recital (10) of t he Designs D irective, w hich, they su ggest, show t hat ' the technical function exclusion was intended to be construed narrowly and that it should be construed in a way th at does not unduly restrict the availability of protection for non-aesthetic (i. e. functional) designs'. "
"40. Azure nonetheless contends that the judge should have rejected Landor's case fo r EUUDR on the facts, namely on the b asis that the Expander Design was purely functional. Apart from the fact that this is (either precis ely or nearly) sa me ar gument on t he fa cts as fail ed in relation t o L andor's UKUDR cl aim, it is in consistent with wh at t he judge's findings in [42], quoted above. In t hat paragraph, which was directed to the EUUDR claim, the judge found that it was design with non-functional (and as the judge put it 'capricious') aspects. 41. It seems to me that this clearly disposes of the argument that the 'features of a ppearance' of the Ex pander Design in this case w ere 'dictated solely by its technical function'. Even if 'solely' is not given the limiting meaning which the judge held, then, as I see it , t he inclusion of the word in Art. 8.1 nonetheless would render it difficult for Azure to contend that the design in the present case is caught by the Artic le, becaus e the de sign ha s bee n found by the judge, in circumstances where this was open to him, to be in part 'capricious'. "
"28. The interpretation of art. 8(l) CD R (and of t he corresponding provision in art. 7(l) of Cou ncil Directive 98/71 on the le gal protection of designs [1998] O J L289 /28) is hi ghly co ntroversial. Similar pro visions e xisted in t he d esigns legislation of se veral Member States prior to harmonisation of the law by Directive 98/71. The assumption has generally been made that the purpose of such provisions is to prevent design rig hts fro m bei ng use d t o obtain monopolies over technical solutions without meeting the relatively stringent conditions laid down in patent law. Two contrasting views have been canvassed in the legal literature. One view holds that a technical necessity exception, such as that contained in art. 8(l) CDR applies only if the technical function cannot be achieved by any other configuration; if t he designer has a c hoice b etween two or m ore configurations, the appearance of the product is not solely dictated by its t echnical func tion. Tha t T heory - kn own as the multiplicity-of-forms theory - is de fended by some German authors (see, for e xample, P. Sc hramm, Der europaweite Schutz des Produktdesigns, (Baden-Baden: Nomos Verlagsgesellschaft, 2005), pp. 242 e t s eq., an d U . Ruhl, Gemeinschaftsgeschmacksmuster: Kommentar, (Koln-Berlin-Miinchen: Carl Heymanns Verlag, 2007), pp. 169 et seq. ) and was formerly followed by the French courts (see, D. Coh en, Le droit des dessins et modéles, 2nd edn , (Paris: Economica, 2004), p. 22). Advocate General Ruiz-Jarabo suggested in Koninklijke Philips Electronics NV v Remington Consumer Products Ltd (C-299/99)[2003] Ch. 159 ; [2002] E. C. R. I-5475 at [34] of th e Opini on) th at art. 7(l) of t he D esigns D irective (an d therefore ob viously art. 8( l) CDR) sho uld be i nterpreted i n t hat manner. He stated: ' . . . a functional design may, none the less, be eligible for protection if it can be sh own t hat th e sam e techn ical fu nction c ould be achieved by ano ther different form. '. The Advocate General's comment is clearly an obiter dictum since Philips v Remington was a case on t he i nterpretation of ar t. 3(l)(e) of Council Dire ctive 89/ 104 to approximate the laws of the Member States relating to trade marks ([1989] OJ L40/1) (TMD). Article 3(l)(e) TMD excludes from trade mark protection, 'signs which consist exclusively of the shape of goods which is necessary to obtain a technical result'. 29. The multiplicity-of-forms theory has been adopted by courts in the United Kingdom (see th e ju dgment o f Ju ly 28 , 2006 of th e Court of Ap peal in Landor & Hawa International Ltd v Azure Designs Ltd[2006] EWCA Civ 1285 ; [2006] E. C. D. R. 31) and Spain (Juzgado de lo Mercantil PTO Numero Uno de Alicante, Auto No. 267/07 Silverlit Toys Manufactory Ltd v Ditro Ocio 2000 SL Unreported, November 20, 2007. 30. There is none the less a major flaw in the m ultiplicity-of-forms theory. If it is accepted that a feature of a product's appearance is not 'solely dictated by its function' simply because an alternative product configuration could achieve the same function, art. 8(l) CDR will apply only in highly exceptional circumstances and its very purpose will be in danger of being frustrated. That purpose, as was noted above, is to prevent design l aw fro m being used to achieve monopolies over t echnical solu tions, t he assumption being that s uch m onopolies are only j ustified if t he more restricti ve conditions imposed by patent law (and in some countries by the law of utility models) are complied with. If a technical solution can be achieved by two alternative methods, neither solution is, according to the multiplicity-of-forms theory, solely dictated by the function of the product in question. This would mean that both solutions could be the subject of a design registration, possibly held by the same person, which would have the consequence that no one else would be able to manufacture a competing product capable of perform ing th e sam e technical f unction (see W . Corn ish a nd D . Llew elyn, Intellectual Property: Patents, Copyright Trade Marks and Allied Rights, 5th edn, (London: Sw eet & M axwell, 2003), p.549). This leads t o th e c onclusion t hat the multiplicity-of-forms theory cannot be correct. 31. T he princi pal alt ernative, discussed by academic authors, to the multiplicity-of-forms theory has its origin in English case law. The case of Amp Inc v Utilux Pty Ltd [1971] F. S. R. 572 concerned the interpretation of a provision of theRegistered Designs Act 1949 which denied protection to the features of a desi gn that were solely dictated by a product's technical function. The House of Lords held that a product's configuration was solely dictated by its technical function if every feature of the design was determined by technical considerations. The striking similarity betweens.1(3) of the 1949 Act and art. 8(1) CDR does not of course mean that the approach of the House of Lords in Amp Inc v Utilux Pty Ltd must necessarily be adopted in relation to the Community provision. Indeed, as was noted above in [29], the multiplicity - of-forms theory has now been adopted by the English Court of Appeal in Landor & Hawa International Ltd v Azure Designs Ltd. Thus the Court of Appeal must have thought th at the a pproach ta ken in Amp Inc v Utilux Pty Ltd w as no l onger valid, following harmonisation, in spite of the similar wording of the Community provisions and the 1949 Act. The approach taken in Amp Inc v Utilux Pty Ltd would, however, have the advantage of allowing the purpose of art. 8(1) CDR to be achieved. No-one would be able t o s hut out c ompetitors by regis tering as Community d esigns th e handful of possible configurations that would allow the technical function to be realised. This may explain why the French courts, which formerly espous ed the m ultiplicity-of-forms theory, began to abandon that theory at the beginning of the 21st century in favour of an interpretation which closely resembles the Amp Inc v Utilux Pty Ltd approach (see the judgments cit ed by D . Co hen, Le droit des des sins et modéles, 2n d ed n, (Paris: Economica, 2004), pp. 23-24). 32. In addition t o b eing supported by a tel eological in terpretation, the approach discussed in the previous paragraph is also supported by the wording of art. 8(1) CDR. That provision denies protection to features of a product's appearance that are, 'solely dictated by its technical function'. Those words do not, on their natural meaning, imply that the feature in q uestion must be the only means by which t he product's technical function can be achieved. On the contrary, they imply that t he need to achieve the product's technical function was the only relevant factor when the feature in question was selected. 33. G ood design involves t wo fund amental e lements: the product m ust perform its function and it should be pleasant t o look at. In the case of some products, such as pictures and ornaments, their very function is to please the eye. In the case of other products, such as the internal working parts of a machine, the visual appearance is irrelevant. That i s wh y the Co mmunity d esign l egislation deni es p rotection to component parts that are not visible in normal use. In the case of most products the designer will be concerned with both the functional and the aesthetic elements. That applies also to large items of industrial equipment, such as shredders for use in recycling plants. The shredder must, in the first place, perform its function effectively and safely and without creating excessive noise, but it is also desirable that the shredder should be pleasing to the eye and thus enhance the working environment of the people who operate it and see it in use. For that reason there is no objection in principle to granting design protection to industrial products whose overall appearance is determined largely, but not exclusively, by functional considerations. 34. It is often pointed out that the Community design legislation, unlike the old laws of some Member States, does not lay down any requirement of aest hetic merit, artistic creativity or eye appeal. The absence of such a requirement is expressly mentioned in the 10th recital in the preamble of Regulation 6/2002 and in the 14th recital in the preamble to Directive 98/71. Some authors infer from this that purely functional designs are protectable. That is a false analysis. Community design law is concerned with the visual appearance of products. That is clear from the definition of 'design' in art. 3(a) CDR and from the requirement of visibility in normal use for component parts in art. 4(2)(b) CDR. Those parts of a pr oduct that cannot be seen are of no concern to the Community law of design because no one cares what they look like. All that matters is that suc h p arts perform the ir func tion. If the law were in tended t o prote ct purely functional designs it would not be logical to exclude the non-visible aspects of design from protection. 35. The significance of limiting protection to the visual appearance of products is that aesthetic c onsiderations are in pr inciple cap able of being re levant on ly w hen the designer is developing a product's visual appearance. Most of the time the designer will be concerned with both elements of good design: functionality and eye appeal. In some cases functionality will be the dominant preoccupation of the designer. The need to make a pr oduct that works will be uppermost in t he designer's mind and will largely determine the appearance of the product. As long as functionality is not the only relevant factor, the d esign is i n principle el igible for pro tection. I t is only when aesthetic considerations are com pletely irrelev ant th at the fe atures of the design are sol ely dictated by the need to achieve a tec hnical solution. This is no t, it must be stressed, tantamount to introducing a requirement of aesthetic merit into the legislation. It is simply recognition of the obvious fact that when aesthetics are totally irrelevant, in the sense that no one cares whether the product looks good, bad, ugly or pretty, and all that matters is that the product functions well, there is nothing to protect under the law of designs. 36. It follows from the above that art. 8(1) CDR denies protection to those features of a product's appearance t hat were ch osen exclusively for th e p urpose of d esigning a product that performs its function, as opposed to features that were chosen, at least to some degree, for the purpose of en hancing the product's visual a ppearance. It goes without saying that these matters must be assessed objectively: it is not necessary to determine what ac tually went on in the designer's mind when the design was bei ng developed. The matter must be assessed from the standpoint of a reasonable observer who looks at the design and asks himself whether anything other than purely functional considerations could have been relevant when a specific feature was chosen. "
"67.... i t m ust be n oted that the d esigner's degree of freed om in developing his design is established, inter alia, by the constraints of the features imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to t he product. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned. 68. At paragraph 18 of t he contested decision, the Board of Appeal stated t hat al l the ' rappers' or ' tazos' exa mined i n t he prese nt c ase consisted of small, flat or slightly curved discs which may be made of plastic or m etal. A ccordingly, i t c oncluded, at p aragraph 20 of t hat decision, that th e free dom en joyed by the des igner responsible f or designing a product of that kind was severely restricted, because, for that type of product, ' [t]he paradigm... is a small flat or nearly flat disk on which coloured images can be printed [and o]ften the disk [is] curved toward[s] the centre, so that a noise [is] made if a child's finger presses the c entre of t he dis k', an d ' [a] ra pper that does not p ossess these characteristics is unlikely to be accepted in the marketplace'. 69. In that connection, it must be noted that 'pogs', 'rappers' or 'tazos' are circular in shape and that, on the date of filing of the application for registration of the contested design, in this case on the date of priority claimed for the design, 'pogs', 'rappers' or ' tazos' had those common features which the designer had to take into account, as set out at paragraphs 18 and 20 of the contested decision and reiterated at paragraph 68 above. That finding is not, moreover, contested by the parties. 70. Therefore, it must be held that the Board of Appeal was correct to find in the contested decision that, on the date of priority claimed for the contested design, the designer's freedom was severely restricted since he had to incorporate those common features in his design for the product in question. Moreover, as the Board of Appeal pointed out at paragraph 20 of the contested decision, the designer's freedom was also limited is so far as th ose items had t o be inexpensive, safe for children and fit to be added to the products which they promote. "
"51. In paragraph 21 of the contested decision, the Board of Appeal found that, although certain features must be present in a conference unit if it is to perform its function, the degree of freedom of the designer of a conference unit was nevertheless relatively wide. 52. In order to challenge the validity of that conclusion, the applicant puts forward, first, the fact that many features of a conference unit as well as their configuration are dictated by the technical function of the device and, second, the existence of a general trend favouring small, flat, rectangular devices, often including hinged elements. 53. With regard to the first factor, it is admittedly true that, in order to fulfil its essential function, a conference unit must have, at the very least, a speaker and a microphone, directed in such a way that the user can hear the sound reproduced by the speaker and his speech can be captured by the microphone. Similarly, buttons which are accessible to t he user are ne cessary, in particular, in or der t o tur n the microphone on a nd t o regu late th e vol ume of the spe aker. Furthermore, to the extent that conference units also have associated functions, features such as voting buttons, the screen and the card slot may also prove necessary from a functional point of view. 54. H owever, as O HIM a nd the intervener have co ntended, t hose restrictions concern the presence of certain features in the conference unit, but do not have a s ignificant impact on their configuration and, therefore, on the form and general a ppearance of the c onference unit itself. In parti cular, it does not seem that a hinged e lement would be necessary in order to ensure any of the device's functionality. 55. That conclusion is borne out by the design corpus, as submitted by the intervener to O HIM, which s hows confer ence units of varying shapes and configurations that differ perceptibly from those used in the contested design. Therefore, depending on the model, the microphone is placed on a stem, or not, on the left, or the right or in the middle of the body of the device. In the same way, if the card slot is normally placed on t he ri ght, it is generally not integrated into t he speaker of t he conference unit but in the actual body of the device . In addit ion, the presence of any hinged element is the exception rather than the rule. "
"A large departure from the prior design corpus is indeed an indication of design freedom. "
"72. In the specific assessment of the overall impression of the designs at issue on the informed user, who has some awareness of the state of the prior art, the designer's degree of freedom in developing the contested design must be taken into account.... the more the designer's freedom in developing the contested design is restricted, the more likely minor differences between the designs at issue will be sufficient to produce a different overall impression on the informed user. ..... 82. In the absence of any specific constraint imposed on the designer, the similarities noted in [79] - [81] above relate to elements in respect of which the designer was free to develop the contested design. It follows that those similarities will attract the informed user's attention... "
"... as the Board of Appeal pointed out at paragraph 19 of the contested decision, in so far as similarities between the designs at issue relate to common features, such as those described at paragraph 67 above, those similarities will have only minor importance in the overall impression produced by those designs on the informed user.... " 40. Conversely, in Procter & Gamble Jacob LJ held at [35(ii)]: "... if a new design is markedly different from anything that has gone before, it is likely to have a greater overall visual impact that if it is 'surrounded by kindred prior art' (H. H. Judge Fysh's pithy phrase in Woodhouse at [58]). It follows that the 'overall impression' created by such a desi gn will be more significant and the room for differences which d o not creat e a su bstantially d ifferent o verall impression is greater. So prot ection for a strik ing novel product w ill be correspondingly grea ter t han for a product w hich i s incr ementally different from the prior art, though different enough to have it own individual character and thus be validity registered. "
"123.... A catalogue of similar features was relied on by Rolawn, but that exercise is a useful one only so fa r as it assists to verbalise a visual impression. 125.... As Jacob LJ indicates, consideration has to be given to the level of generality to be applied to the exercise - the concept is inherent in the concept of "overall impression" - but generality must not be taken too far. Just as, in his case , it w as too general to des cribe the bottle as " a canister fitted with a trigger spray device on the top", in the present case it is too general to describe either product as "a wide area mower, with rigid arms carrying cutters, and whose arms fold themselves up at a midway point", and so on. One of the problems with words is that it is hard to use them in this sphere in a way which avoids generalisation. But what matters is visual appearance, and that is not really about generalities.... 126 In every case I come to the clear conclusion that a different overall impression is produced by the Turfmech machine. In each case it would be possible to articulate the differences in words, but the exercise is pointless, because the ability to define differences verbally does not necessarily mean that a different overall impression is given any more than a comparison of verbalised similarities means that the machines give the same overall impression.... "