• Rosie Burbidge

When is a design solely dictated by technical function?



A recent EU General Court decision provides further insight into when a design is “solely dictated by its technical function”. The case concerned an attempt to invalidate a registered Community design (pictured) for posts. The design application was filed in January 2004.


The EUIPO Board of Appeal was not convinced that the features of the appearance of the product had been dictated by considerations other than technical ones and declared the design invalid. It took into account in particular a European patent application that corresponded to the design.


However, in its judgment published on 19 October 2022 (Case T-231/21), the EU General Court reversed that decision and rejected the application for a declaration of invalidity.


Patent application

The Court agreed with the design owner that the existence of a patent application representing the contested design could not, on its own, rule out any possibility that considerations other than technical considerations played a role in the creation of the contested design. It stated:

a patent is a document which explains the technical specificities of a product. Such a document, on account of its exclusively technical purpose, cannot, however, serve automatically to rule out the possibility that considerations other than technical considerations, for example considerations of a visual nature, might also have been taken into account in the creation of a design which is, moreover, represented in that document.”

Other evidence

The other arguments presented to overcome the “technical function” challenge included expert opinions, the existence of alternative designs and the fact that the product concerned was visible to the public.


The Court said all of these factors should have been considered. It concluded that the Board:


could not have been unaware that it is apparent from the overall analysis of the evidence provided, and therefore from the objective circumstances relevant to the present case, and, in particular, from the expert opinions, the existence of alternative designs and the fact that the product concerned is visible to the public and is very large, that two of the three features of appearance of the product concerned were not solely dictated by the technical function of that product and that the visual aspect of the product concerned was taken into account by its designer.”

The two features of the product not dictated by technical function were the flange and open channel and the U-shaped profile. The Court has previously held that if at least one of the features of the product is not solely dictated by technical function then the design cannot be declared invalid.


Developing jurisprudence

This ruling, which will be welcomed by design owners, provides further analysis of the “technical function” issue, which was addressed in detail by the CJEU in the DOCERAM case in 2018 (Case C-395/16).


It is particularly helpful in clarifying that the existence of a patent application does not automatically rule out the possibility that non-technical considerations might have been taken into account in the creation of a design.


To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com


#design #EU #invalidity #technicalfunction