Case No. IP-2021-000119

The law43.Section 1C(1) of the 1949 Act provides:“A right in a registered design shall not subsist in features of appearance of a product which are solely dictated by the product’s technical function.”44.There is an equivalent provision in art.8(1) of Regulation 6/2002. In Cantel Medical (UK) Limited v ARC Medical Design Limited [2018] EWHC 345 (Pat) I said that in effect art.8(1) requires the court to ignore features solely dictated by technical function when comparing a registered design with an accused design:“[166] It has been held by what was then the OHIM Board of Appeal that art.8(1) of the Design Regulation deprives a feature of protection solely where the need to achieve the product’s technical function was the only relevant factor when the feature in question was selected to be part of the overall design. If aesthetic consideration played any part, art.8(1) does not bite. This is to be assessed objectively from the standpoint of a reasonable observer. See Lindner Recyclingtech GmbH v Franssons Verkstäder AB (R 690/2007-3) [2010] ECDR 1, at [28] to [36]. [167] Lindner was followed by Arnold J in Dyson Ltd v Vax Ltd [2010] EWHC 1923 (Pat); [2010] FSR 39, at [31] and apparently also approved by the Court of Appeal in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339; [2013] FSR 9, at [31]. [168] Since art.8(1), where it applies, deprives a feature of design protection, I think that such features are to be ignored in the assessment of overall impression under art.10(1). This is to be contrasted with the approach to the related question of designer freedom under art.10(2). As discussed below, assessment of the latter is not binary, but more flexible, with greater or lesser weight being attached to similarities or differences in appearance, as may be appropriate.”This case45.Mr Elias argued that the following four features of the designs in suit were solely dictated by technical function: (1) the distribution of gold flakes, i.e. scattered throughout the liquid when the bottle is shaken and otherwise settled at the bottom; (2) the use of gold flakes; (3) leaving the upper, curved portion of the bottle clear of markings and (4) putting the integrated light source in the punt (the dimple) at the base of the bottle.46.All four features are aspects or consequences of aesthetic choices made by the designer. It is true that once the decision to have a snow effect was made, the inevitable consequence was the use of gold flakes and of course they settle at the bottom of the bottle if the bottle is not shaken. But that does not give the gold flakes a technical function.