An industrial design does not include the appearance features of a product that result solely from its technical function. What does this concept mean in practice and what happens when a design dictated by a technical function also includes appearance features?

An industrial design is a new and individual form of a product or its part, given to it in particular by the features of lines, contours, shapes, colors, texture or material of the product and by its ornamentation. The “form” of a product should be identified with its appearance, therefore protection of an industrial design can only cover the external form of the object, not its internal structure. In the case of industrial designs, visual aspects and aesthetic impressions are important, not internal structure or functionality.

The protection of an industrial design does not cover the features of a product resulting solely from its technical function (Article 107, paragraph 1, item 1 of the Act of 30 June 2000 – Industrial Property Law and Article 8, paragraph 1 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs). Leaving the functional features of an industrial design within the protection of this right would lead to circumventing the provisions on the duration of protection of the right from a patent or the right of protection for a utility model. This would also create the possibility of obtaining an exclusive right to technical solutions without conducting an examination. The procedure for registration of industrial designs does not provide for a substantive examination. The authority grants the right after checking the correctness of the application from a formal perspective. Therefore, a design that does not meet the statutory conditions for obtaining the right from registration will be granted protection. Failure to meet the statutory conditions for obtaining protection may be the subject of examination only in the procedure for invalidating the right from registration of an industrial design.

The consequence of a situation in which a given product is subject to registration as an industrial design but results solely from a technical function is a limitation of the exclusivity granted under such right. Features resulting from technical functions remain outside the scope of protection. “An industrial design shaped entirely by features described in art. 107 sec. 1 points 1 and 2 of the Industrial Property Law may be invalidated (art. 117 of the Industrial Property Law). In such a case, the provisions of art. 107 sec. 1 points 1 and 2 of the Industrial Property Law may be interpreted as providing for exclusion from protection” (Industrial Property Law, Art. 107 SPP T. 14B ed. Skubisz 2017, 2nd ed.).

The issue of determining the features of a product that result exclusively from its technical function raises many doubts. In the legal systems of individual countries, two approaches to this concept were visible. The first one is the so-called principle of multiplicity of forms, which boiled down to assessing whether the examined feature of the design constitutes the only available form necessary to achieve a specific technical result that the product fulfils in accordance with its intended use. (judgment of the Supreme Administrative Court of 21 May 2013, II GSK 268/12). According to this criterion, “if the technical result can be achieved only with the help of a specific form, the design including this feature cannot be protected by exclusive rights. If the creator (designer) of the industrial design has a choice between different forms to achieve a specific technical purpose, then such features of the product’s appearance that serve to fulfil the technical function may be protected.” (Tischner Anna, Jarosiński Wojciech, Widła Bohdan, Commentary on Regulation No. 6/2002 on Community designs). According to the second criterion, it should be assessed whether the technical function is the only factor determining the appearance features of the product.

The case-law has been moving away from the multiplicity of forms theory in favour of the second of the indicated views. This is clearly visible in the judgment of the Court of Justice of 8 March 2018 in the case DOCERAM GMBH v. CERAMTEC GMBH (reference number C-395/16), which indicated that Article 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs must be interpreted as meaning that, in order to assess whether the features of appearance of a product are exclusively dictated by its technical function, it is necessary to determine whether that function is the only factor determining those features, and the existence of alternative designs is not decisive in this respect. The Court indicated that Article 8(1) of Article 1 of Regulation No 6/2002 excludes from protection cases where the need to fulfil a technical function of a product is the sole factor determining the designer’s choice of a feature of appearance of that product, while considerations of a different nature, in particular those relating to the visual aspect of the product, play no role in the choice of that feature.

The above judgment means that protection under the right of registration of an industrial design also applies to products conditioned by technical reasons, provided that technical reasons do not constitute the only factor determining the appearance of the product. It is important for the protection of such a product that the appearance of the design is also dictated by aesthetic values, even if these values ​​do not play a dominant role. When choosing the subject of protection of an industrial design, it is worth taking into account the above indications of the Court of Justice, remembering that features of the design that result exclusively from the technical function of the product remain outside the scope of protection of an industrial design.