According to Alicante News, OHIM's Board of Appeal has invalidated a design on the basis that it is dictated by technical function (Decision of the Third Board of Appeal of 22 October 2009 in case R 690/2007-3). This is unsurprising - but what certainly is surprising is that the Board has not followed the Opinion of the Advocate General in the Philips case, nor that of the UK Court of Appeal in Landor & Hawa v Azure (which followed the A-G in Philips) but has gone its own way. To quote:
“That provision [i.e. CDR 8(1)] denies protection to features of a product's appearance that are ‘solely dictated by its technical function'. Those words do not, on their natural meaning, imply that the feature in question must be the only means by which the product's technical function can be achieved. On the contrary, they imply that the need to achieve the product's technical function was the only relevant factor when the feature in question was selected.”
To UK ears, this sounds much like the House of Lords in Amp v Utilux. It is also, of course, consistent with the treatment of trade marks by the ECJ in Philips, as suggested by the Dutch courts.
The complete decision is not yet available on the website. In the meantime, here is a link to the first instance decision. Will this be appealed to the CFI? Will the ECJ follow OHIM, or its own A-G? We await these answers (and your thoughts, dear readers) with bated breath.
This decision was written by David Keeling, a speaker at the recent FICPI China Symposium held in Shenzhen, where I was also speaking. He mentioned this decision, and would like it to stimulate a debate.
ReplyDeleteHe raised the issue that taking a narrow interpretation of the the exclusion would enable a person to monopolise shapes that perform a particular function, if there were three possible shapes and these were all registered.