Co-authored by Meghana1

IP laws are not wary of overlapping in their forms and the same has been observed and discussed since their inception. Consequentially, no fine line can be drawn between various facets of Intellectual Properties accruing to striking similarity in their inherent nature and the aspects they deal with. The overlap between industrial designs and the patentable nature of functionality of those designs has been a conundrum that has been an area of dispute in various jurisdictions.

In the case of Cow and Coy v Cannon Rubber Manufacturers2 from England, the dysfunctionality of functional Designs has been discussed to some extent, wherein the fact that a particular design could not be judged solely by viewing and the suit for design infringement would not hold good because the design was functionally inspired and that the design includes a method of construction. It was however denied saying:

It is to be noted that the statutory objection does not extend to a method or principle of construction whereby the design is applied to an article. It is only in cases where the design can fairly be treated as itself covering such a method or principle that the objection is applicable. This can be tested by posing the question whether a method or principle" of construction is possible of performance only by applying the registered design, or one not materially differing from it, to an article.

Another noteworthy aspect, though not closely related to this discussion that was discussed was the difference between the terms shape and configuration. It was held that:

...But all that synonymity implies in that connection is the adoption of a definition for shape which will include configuration or for a definition of configuration which will include shape. None of the learned Judges who made the observations which Luxmoore. J summarized could have meant as the Defendants here submit that the word "configuration" could be wholly disregarded and a definition of shape adopted which restricted its meaning to outline alone. Nor could they have intended to exclude from the monopoly conferred by registration of a design which indicated a shape given to a part or secured by an association of parts of a feature presented by one or more parts having a contoured surface or surfaces.

Even though, the above mentioned case set a precedent in terms of approaching functional designs, the interpretation of Design Law in the UK and India has not attained much clarity with respect to exclusion of functional designs as even the law does not draw a fine line in this respect. The definition of "designs" in Section 2(d) of the Designs Act, 2000 requires the "design" to be judged solely by the eye but specifically excludes "any mode or principle of construction or anything which is in substance a mere mechanical device". Courts in UK that follow the EU directives on Design, have at times rejected the multiplicity of forms theory and banked upon "no aesthetic consideration theory" which rests upon the idea that the author had in mind and whether or not it was solely judged by functionality, thereby meaning whether the author had other aspects of design in mind even if that design embodies function that may not be achieved by means of any other form. Different member countries of the EU interpret the law in different manners. The most recent case law PepsiCo, Inc. v Grupo Promer Mon Graphic SA3 , however tried to resolve this conundrum in a close to successful manner acknowledging that, " so far as similarities between the designs at issue relate to common features, those similarities have only minor importance in the overall impression produced by those designs on the informed user. In addition, the more the designer's freedom in developing the contested design is restricted, the more likely it is that minor differences between the designs at issue will be sufficient to produce a different overall impression on the informed user"; thereby, accruing reasonable credit to an informed user/customer and denying the multiplicity of forms approach, in case two designs form a similar impression on an informed user. In India, in the case of Carlsberg v Som Distilleries 4 the anomaly was approached in the following words:

"Normally, designs which are purely functional cannot be protected or form the basis for an action for infringement. A functional shape and configuration, which is dictated solely by the functionality, is not registrable under the Design Act as a design. The learned Judge referred to the observation of Lord Reid, J. in Amp. Inc. vs. Utilux Pty. Ltd. 1972 RPC 103 wherein the learned Lord observed, "..........and the words 'judged solely by the eye' must be intended to exclude cases where a customer might choose an article of that shape not because he thought that the shape made it more useful to him".

In yet another judgment in Whirlpool of India v Videocon Industries,5 it was addressed saying:

"For a defense of functionality to succeed, it is not enough to say that the form has some relevance to the function. If a particular function can be achieved through a number of different forms, then a defense of functionality must fail. For the defense of functionality to succeed, it is essential for the Defendant to establish that the design applied for is the only mode/option which was possible considering the functional requirements of the products."

In India, the terms used in Section 2(d) are mode or principal of construction or mere mechanical device. Functionality is not, per se ,excluded for registration; however, the terms when deconstructed as has been done in various case laws, are interpreted to exclude functional designs. However, it sometimes depends on the facts and circumstances in question and multiplicity of forms approach is applied, as was applied in the Whirlpool case. It can be deciphered that in India, both the approaches are followed since our judgments are highly inspired by the conditions specific to each particular case.



2 1959) RPC 240 

3 C-281/10 P 

4 2017 SCC OnLine Del 8125 

5 2014 (60) PTC 155 (Bom). 

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