Registered designs protect the overall appearance of products resulting from their visual features. Whilst it is the appearance rather than the functionality of a product which is protected, a functional product may nevertheless be the subject of design registration. Indeed, section 7(2) of the Designs Act 2003 specifically provides that a visual feature may, but need not, serve a functional purpose. The recent decision in Bitzer Kuehlmaschinenbau GmbH [2015] ADO 1 suggests that not only are functional products registerable, but that functionality may play a role in determining whether a design is new and distinctive.
The decision arose after the applicant requested a hearing during the examination of a number of designs for refrigeration compressors. The representations for one such design are shown in Figure 1. During examination, an objection of lack of distinctiveness was raised based on the prior art (Figure 2).
The similarities between the design and the prior art are readily apparent, however, the applicant put forward a number of submissions as to why its design was not substantially similar in overall impression to the prior art.
Firstly, it was said that there were significant constraints placed on the designer due to the requirement that the product be interchangeable with existing models of compressor. In order to perform its intended function, the design needed to have certain features arranged in a specific and predetermined way. It was accepted by the delegate that the limited freedom to innovate explained many of the similarities between the design and the prior art.
Secondly, it was said that there were important differences between the design and the prior art. In particular, it was said that the piston head cover (circled) of the prior art had a stepped outer profile comprising two planar surfaces with fastening bolts located flush to each of the planar surfaces. By comparison, the design was said to be characterised by piston covers having a convex outer shape with recessed portions about the lower and side edges for receiving bolts.
It was further submitted that an informed user of such a compressor would be aware that the design of the piston head cover was important in terms of operation and maintenance of the compressor.
In concluding that the designs were registerable, the delegate stated:
Given the constraints on the designer, the considerable art base, the specialised nature of the informed user who typically looks first to function, then only to form with an eye as to whether the compressor will fit the proposed application, I consider the differences Mr Bowman has highlighted sufficient to confer the Designs with the requisite distinctiveness.
The decision suggests that visual features of a design should be given greater prominence in circumstances where the informed user would consider those features to be functionally (but not necessarily visually) important. In this instance, it is difficult to understand why the informed user would focus on the functionality of the piston head covers as opposed to any other functional feature of the compressor which contributes to its appearance. Even if the piston head covers were the most important feature from a functional perspective, it is surprising that differences in that feature alone could result in a finding that the design was not substantially similar in overall impression, particularly in the absence of a statement of newness and distinctiveness directing attention to that feature.
Nevertheless, the decision provides an important reminder of the extent to which registered designs can be used to provide protection for highly functional products. Registered designs can be particularly useful in protecting against counterfeit products where differences in appearance are likely to be minimal.
