Registered designs can protect the appearance of functional products, including features that contribute to their overall design.
Registered designs protect the appearance of a product, rather than how it works. This means that even functional products can benefit from registered design protection. A design is infringed if an accused product produces the same overall impression on an informed user – it’s all about what the thing looks like.
According to the Registered Designs Act, there is no right subsisting in features ‘which are solely dictated by the product’s technical function’. This sometimes leads people to think that ‘it’s a functional product, so registered designs don’t apply’. But if you fail to register, you are likely to be missing out on important protection. Many products have primarily ‘functional’ or ‘useful’ purposes, but it is practically always true that someone has put at least a bit of thought into what the thing looks like – there will almost certainly be a ‘product design’ element as well.
Examples of registered designs for functional products
Examples of registered designs for useful and functional products.
What Is the Technical Function Exclusion?
How does this exclusion of designs ‘solely dictated by technical function’ actually work? That’s quite an interesting question, and the answer is not entirely settled.
The Multiplicity of Forms Theory
It might be thought that, if there is another way the thing could look, which works just as well, then the design cannot be solely dictated by technical function – the designer had a choice to make it look like this or like that. This idea, that a design is not solely dictated by technical function if there is another way of doing it, is called the ‘multiplicity of forms theory’. It is a fairly easy test to understand and apply. It is broadly consistent with the ‘alternative designs’ test in the USA.
The Causality Theory and UK Design Law
But in recent cases, the High Court has turned its face away from this elegantly simple theory. There does not yet seem to be an authoritative decision from the Court of Appeal, but the direction of travel in the High Court is reasonably clear – most recently in Chiaro Technology Limited v Mayborn (UK) Limited5, Sir Anthony Mann said:
“An aspect of design will fall within the section if it is an aspect which is dictated by function even if the function might be achieved by another design. It does not require that the design is the only means by which the product’s technical function can be achieved – the so called ‘multiplicity of forms’ theory. So one looks at the design and decides whether it, or the relevant aspect, is required for functionality.”
So ‘multiplicity of forms’ seems to be out of the window in favour of a different test – the so-called ‘causality theory’. This theory has a history as well, but became dominant in the EU following a 2018 CJEU ruling. According to this, the test is whether the ‘features… in question are due solely to the need to develop a technical solution, while aesthetic considerations do not have the slightest influence’.6
So this test seems to focus more on the design process, what actually influenced the designer or came into his or her consideration. This can complicate things, but has the clear potential to end up excluding more designs.
What Does the UKIPO Say?
Meanwhile at the UKIPO, the Examination Manual is confusing. They appear to follow the EU and UK courts in endorsing the ‘causality’ theory:
“The fact that the technical result may be achievable by another means will not necessarily render a design acceptable for registration”.
But then go on to say:
“An applicant may successfully overcome a[n]… objection if they are able to demonstrate that… it need not appear to [sic] the exact form as shown in the application”.
That sounds a lot like ‘multiplicity of forms’, and indeed we have found that showing that it could be done another way will generally overcome an objection at the examination stage.
Why Register Designs for Functional Products?
Following Brexit, UK courts are no longer bound by the CJEU’s opinion of things, but so far they seem to be following that thinking. Perhaps one day there will be a properly contested appeal on the point. Until then, I would suggest it is well worth registering designs for a wide range of products, including most ‘functional’ ones.
For businesses developing functional products, registered design protection can therefore be an important part of an overall IP strategy. The fact that a product has a technical or useful purpose does not automatically mean that its appearance cannot be protected. The precise application of the technical function exclusion remains an area to watch, particularly as further UK case law develops.
- Coat hanger: UK Registered design 2080944; Mainetti v Hangerlogic [2012] EWPCC 42
- Electric skin brush: EU Registered design 000407747-0001; L’Oréal v RN Ventures [2018] EWHC 173 (Pat)
- Blind headrail: EU Registered design 000361118-0001; Louver-Lite v Harris Parts [2012] EWPCC 53
- A device for use in performing a colonoscopy: EU Registered design 002523191-0001; Cantel Medical (UK) Ltd. v ARC Medical Design Limited [2018] EWHC
- [2023] EWHC 2417 (Pat)
- Opinion of the Advocate General in Case C-395/16 Doceram v CeramTec
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