The Patent Office has issued a new Practice Notice on the registrability of functional designs. The Office is keen to remind people that it is now possible to protect designs with no aesthetic quality. While it is not possible to register designs that are dictated solely by technical function, according to the Patent Office, the s.1C(1) functionality exception in narrower for designs than it is for trade marks. In reaching this conclusion, they cite AG Ruiz-Jarabo Colomer in Case C-299/99 Philips v Remington, which is a little odd because the ECJ didn’t follow the part of his opinion that highlighted the differences between the 2 types of IP rights. However, this is understandable in view of the dearth of case law in what is still a very new area. According to the practice notice, the test of whether the external features of a design are solely dictated by function (and hence excluded from registration) is: “whether or not the technical function dictated the appearance of a product to the extent that there is no (or neglible) design freedom.”
The Practice Notice also considers Section 1C(2), likening it to the old “must fit” exception. Here the test is whether “there is any part of the design which is not required to be of the appearance it is, in order to enable it to fit the end product.” If the answer is no, the whole design is unregistrable. If only some parts of the design are dictated by the need to fit together with something else then only those parts are exclude from protection and the other features of the design may be protected as long as they satisfy the other requirements for registration. Finally, the Patent Office notes that modular systems may now be protected under s.1C(3).
IPKat Riddle: AG Ruiz-Jarabo Colomer in Philips v Remington says that “the feature concerned must not only be necessary but essential in order to achieve a particular technical result.” There is a small prize on offer for anyone who can explain the difference between the terms “necessary” and “essential” to the IPKat.
Find out what’s essential here, here, here and here
The Practice Notice also considers Section 1C(2), likening it to the old “must fit” exception. Here the test is whether “there is any part of the design which is not required to be of the appearance it is, in order to enable it to fit the end product.” If the answer is no, the whole design is unregistrable. If only some parts of the design are dictated by the need to fit together with something else then only those parts are exclude from protection and the other features of the design may be protected as long as they satisfy the other requirements for registration. Finally, the Patent Office notes that modular systems may now be protected under s.1C(3).
IPKat Riddle: AG Ruiz-Jarabo Colomer in Philips v Remington says that “the feature concerned must not only be necessary but essential in order to achieve a particular technical result.” There is a small prize on offer for anyone who can explain the difference between the terms “necessary” and “essential” to the IPKat.
Find out what’s essential here, here, here and here
FUNCTIONAL DESIGNS GUIDANCE
![<strong>FUNCTIONAL DESIGNS GUIDANCE</strong>]()
Reviewed by Anonymous
on
Friday, August 22, 2003
Rating:
Follow the IPKat on LinkedIn 
![[Guest post] EUIPO Second Board of Appeal refers case to Grand Board of Appeal following earlier refusal to register a photograph of a man’s head/face as an EU trade mark](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiUj9v-k3DYaSVMR4lsmKDLHVB5nIoINuvZNbH2TQCelrfaAE9qmGSAQs-plzQ7HnZ7Svk_gRdrIODp0Nat5vpWajduit3xkArNhK76AHhX770RIJ62thfCVI5fnvcXU-5zH4NkUSfPY9FjRMFiK7OKJ7m7YSo2FzhyPSoA8ZWCsxaOXb0bBCoPQA/s72-c/Picture%201.png)
![[Guest post] Benelux Office rules on opposition proceedings prepared by ChatGPT](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEi29VY0rNNP1Hqyz8RgB47r4q7fhqQfYHxsEbX_RKmT4KU5Y_vg7vB6dsAW91CidjMfJ38klTvD4mMtZb3QmwFPAHaGF88BPttWSbfYvo7UUg7MpFRTNtEjThmG0QaX2qZFFHSnN71i3YQZSBFC0SL7PgkAlme-XH8cSNWRFbOAOuLr_LMOGcImLQ/s72-c/Screenshot%202024-12-04%20at%2020.45.58.png)
Posts
No comments:
All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.
It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.
Learn more here: http://ipkitten.blogspot.com/p/want-to-complain.html