A planter, a chair, a stroller, a remote control, a switch, etc… are eligible to design protection regarding their appearance, and to patent protection regarding their technicality. The choice of protection is not trivial, because the scope of protection conferred by a patent or a design differ: protecting the invention in all of its variants when it comes to patent; protecting the appearance of a product implementing the invention when it comes to design.

Quite often, the choice of which protection is going to apply has to be made.

Indeed, not all appearances are protectable by a design. When the function dictates the form of a product, a protection by design is impossible and a protection by patent must be sought. Under article 8(1) of the Council Regulation on Community designs, “a Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function”.

Which criteria shall be applied? If the chosen form is the only one that can fulfill the technical function in question, the design way has to be put aside. But does the opposite – that is the multiplicity of shapes – allow for a design protection? The “multiplicity of forms” criterion is contested, in particular for the reason that it would foster the protection of shapes devoid of any aesthetical aspect. However, the aesthetical character of a shape is not a condition of protection of a design. As stated by Recital 14 of the Directive 98/71, “Whereas technological innovation should not be hampered by granting design protection to features dictated solely by a technical function […] it is understood that this does not entail that a design must have an aesthetic character”. According to the EUIPO, when “the function of the product only is important, the design right is not justified” , despite other possible forms.

The criterion of multiplicity of shapes keeps on attracting. For instance, in its judgement from October 6th, 2016, the Paris First Instance Court rejected a cancellation action against a Community design for a stylus under article 8, on the ground that “it appears that the specific design sought is that of the shape of the ink pen and the adjunction of two visible buttons on the top is no more than aesthetical, whereas other stylus bearing the same technical function have been marketed under different forms, as it appears from the examination of the evidences brought to debates”. Although the Court notes that the adjunction of buttons is aesthetical, it does also refers to other possible shapes…

In a judgement of September 15th, 2016, the Paris First Instance Court recalls with pedagogy that: “the sole fact that the shapes taken by the product incorporating the design meet technical restraints related to its utility and its functionality, or that this product is incidentally under patent application […] does not per se mean that those technical restraints solely dictate the choice of the adopted shape and appearance”. The adverb “solely” implies that the ground for cancellation may only be withheld if the shape is solely dictated by the sole function. In relation to the criterion of multiplicity of forms, the judges have a clear position: “To assess this functional character, nothing would prohibit taking into account the multiplicity of shapes existing in the prior art, which might give a hint, albeit insufficient, on formal variations the technical restraint allows”.

Hence, when only one shape is possible in order to achieve one function, a design protection shall be excluded and a patent protection shall be sought. However, when several shapes are possible to achieve one function, a design protection is conceivable, provided that “all the essential features of the appearance of the product in question are not solely dictated by its technical function”.

For a design protection, the function shall not dictate the shape. Patent and/or design, as a synergy of rights more complementary than incompatible, requires consideration before any disclosure, in order to optimize the protection of your intangible assets.

Contact : David MILLET 

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