Pratyush Nath Upreti
One of the most debated topics in European design law is a ‘technical character’ criterion for determining the scope of design protection. Although theoretically it looks clear, it has in practice certainly raised the eyebrows of lawyers trying to convince courts that the feature in question is not dictated by its technical function. Article 8(1) of the Community Design Regulation denies protection to the features of appearance of a product which are solely dictated by its technical function. There is a plethora of decisions that have given direction in determining product technical function. It is an established principle that the technical character must not be assessed by the perception of the informed user; rather, it must be assessed objectively (R 211/2008-3, ‘Fluid Distribution Equipment, 29 April 2010), which states:
‘the technical functionality of the features of a design may be assessed, inter alia, by taking into account of the documents relating to patents describing the functional elements of the shape concerned’.
The question here is whether, in determining the technical functionality of a design, the engineering (designer) compromise should be taken into consideration. Does the compromise influence the decision of the court? Does it have an impact on technological innovation?
Significance of engineering compromise
Linder Recyclingtech Gmbh v. Franssons Verkstader (Case R 690/2007-3) is the only case that touches upon the concept of ‘engineering compromise’. The question before the court was whether the V-shaped arrangement of the staggered rotor blades in a chaff cutter pursued a purely technical function. Although the Board of Appeal found that the features were purely technical in nature, arguments advanced by the defendant bring an interesting defence in analyzing the technical character of the design in question. In this case, the concept of ‘engineering compromise’ was made as a reference by affidavit filed by the respondent, arguing the V-shaped knives were chosen mainly for aesthetic reasons. The respondent argued that the V-shaped design was chosen intentionally to tune the relatively low-speed rotation of the rotor since it was particularly important that the engineer had an option of using a zigzag form, which was more technical than V-shaped design, which he chooses later in order to comply with the visual requirement.
The visual requirement was argued to be satisfied by use of a camera or a mirror where the shredding process would be observed. Therefore, to comply with the visual requirement, a zigzag was avoided, as it would pose difficulty in identifying the process in a rotation.
Basically, the respondent stressed the engineering compromise over design should not be considered as technical per se. On the other hand, the appellant’s argument was based on the premise that the use of V-shaped knives was used to ensure that material introduced into the shredder is guided into the middle of the rotor and avoids excessive noise. The Board of Appeal response was that
“the fact that the designer accepts a technical drawback (x) for the sake of a technical advantage (Y) knowing that he cannot have both X and Y, does not mean the design has not been solely dictated by the technical function of the product. On the contrary, it strongly implies that the nothing but the technical function of the product was relevant to the development of the design”.
Prima facie, ‘engineering compromise’ has two meanings. First, while the design can be achieved by several ways, the engineer may just compromise or ignore one aspect, but the design would still have technical features and such functionality may be a relevant factor in determining design protection. Secondly, even if there is a compromise between the technical features, what was the intention behind of such compromise: was it just to make it more or less dominant than aesthetic appearance? Can good faith be a defence?
The problem with this defence is that it emphasised that, during the process of engineering, there were several features, and compromising one of the technical features highlights that design solely works on technical features. However, we cannot deny that fact a good designer who may be an engineer himself may focus on the elements of good design: functionality and eye appeal. There are chances that, when creating a design, functionality may be dominant and to make a product that works through appearance, a designer could compromise some technical feature to make a design in a way that will largely determine the appearance of the product. This is important because if the functionality is too dominant than the aesthetic part will be completely ignored by the consumer, making appearance irrelevant. Although it is difficult to imagine such a scenario, we cannot negate such circumstances. So, in such a scenario, ‘engineering compromise’ may be relevant in determining technical character. But still, it does not make a strong defence.
In my opinion, in design cases engineering compromise can have no significance. It is obvious that there will be some sort of compromise done by an engineer to achieve the feature through technical function. Further, a fundamental aim of the design is to protect the appearance of the product resulting from the feature, not the technical feature itself. Arguing engineering compromise is as good as saying that alternatives were present to achieve the same function. I think there should be a strict interpretation of technical consideration irrespective of whether engineer has compromised or not. All features that are dictated by technical feature should not be given design protection because the technical feature can be protected through another form of intellectual property, like patents.
The Board of Appeal did not appreciate the arguments of engineering compromise and there is no case law (at least I did not come across any during my research) where it is taken as a defence, or where further discussion has been held. I think however that there may be some relevance of engineering compromise in determining the design case. During the process of designing, there can be engineering compromise in two ways; (i) engineering compromise between technical-technical feature (ii) compromise between technical-aesthetic features. The question is what is the meaning of technical and aesthetic? There is no concrete definition of either. The technical is determined on the basis of objective analysis, whereas aesthetic is purely subjective.
Significantly, Recital 14 of Design Directive emphasises that the
technical innovation should not be hampered by granting design protection to features dictated solely by a technical functional where it is understood that this does not entail that a design should not hamper the technological innovation must have an aesthetic quality.
Does this imply that ‘aesthetic’ is not a requirement under design law? However, the definition of design under Directive includes aesthetic features. If there would be a compromise between technical-aesthetic, would there be some relevance of the degree of freedom of creativity in a technical matter? As a practical matter, I am not sure, how would it be addressed, but engineering compromise is worth discussing at the academic level.
Source: Class99 Design Law Blog/MARQUES
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