INVISIBLE FEATURES AND FUNCTIONALITY OF DESIGNS
The seminar “Invisible Features and Functionality of Designs” was held at the Turkish Patent and Trademark Office in Ankara on 21 March 2019. The speakers of the seminar were Dr. İsmail Fidan and Prof. Uma Suthersanen. Dr. Ismail Fidan is an expert on Intellectual Property Law presently working at the Turkish Patent and Trademark Office and Prof. Uma Suthersanen is recognized as a global leader in intellectual property law thanks to her extensive contributions in the said field.
Ms. Yasemin Arslan and Ms. Tugba Derya Yılmaz from Stock Industrial Property Services A.S. have had the privilage to attend the seminar, both of whom are senior patent attorneys specialized in designs.
Dr. Ismail Fidan has presented a detailed outline of the topics of the seminar, initially defining the concepts of invisible designs and providing an in-depth analysis of the said topic within the framework of the Community Design Regulations of the EUIPO, the former Decree-Law No. 554 on the Protection of Industrial Designs in Turkey and the prevailing Turkish Industrial Property Code No. 6769. It should be noted here that, in the absence of relevant provisions in the former Turkish Decree Law No.554 regarding the protection of invisible parts of designs, Turkish Industrial Property Code No. 6769 covers provisions concerning the protection of invisible parts of designs, which are fully harmonized with the provisions of the Community Design Regulations of the EUIPO in this respect.
Dr. Fidan has also addressed the issue of protection of functional designs, providing a general outlook on the said topic and specifically focusing on the provisions regarding functional designs within the framework of the Community Design Regulations of the EUIPO, the former Decree-Law No. 554 on the Protection of Industrial Designs in Turkey and the prevailing Industrial Property Code No. 6769. He has particularly pointed out that Industrial Property Code No. 6769 has now become fully compatible with the respective provisions of the Community Design Regulations in this regard. He has also argued that the indication of the word “any” in the provision regarding functional designs under the former Decree-Law No. 554, namely “designs determined by a technical function not allowing the designer any freedom in the design characteristics and elements fall outside the scope of protection” has been duly excluded from the prevailing IP Turkish Code due to its restrictive nature regarding the implementation of technical designs.
Prof. Uma Suthersanen has, on the other hand, provided a global and extensive perspective regarding the issues under discussion, specifically exclusions and limitations in IP rights as well as the exclusion of functional designs as set forth in Article 8 of Council Regulations (EC) No 6/2002. She has dealt with a number of approaches regarding the functionality of designs, namely the Old British Approach which argues that “a design is invalid where the designer is concerned only with technical function and not with the visual appeal of the product”, “multiplicity of forms” approach, which holds that if there is a design alternative possible that fulfills the same function, the design cannot solely be dictated by its technical function and the alternative approach of “no-aesthetic-consideration-test”. One of the highlights in her presentation has been the shift in designs, wherein a product which the design is intended to be applied to or incorporated can be confusingly similar to a seemingly identical product and she has cited a Court decision of the question of infringement of design rights obtained for spiky balls made and sold for use as laundry aids in this respect.
Notwithstanding the issues discussed in the seminar, a number of questions still remain unanswered:
For a design to be named as an invisible design, does such design need to be invisible in all products to which it is applied, i.e. in case a design is visible in a certain number of products to which it is applied but invisible in the rest, should this design be considered as a visible design?
-Shall the rationale regarding invisible designs and functional designs be evaluated by the Turkish Patent and Trademark Office at all levels of design prosecution? Shall the Turkish Courts and the Turkish Patent and Trademark Office base their decisions of invalidity on these rationale regardless of the fact that these rationale may or may not be stated as grounds for opposition or in a court action?
In conclusion, it has been reasoned that the approaches of the Turkish Patent and Trademark Office relating to the protection of invisible designs and functional designs are not clearly specified and implemented and it is still not definite at which point the provisions regarding the protection of invisible designs and functional designs should be taken into account during the prosecution of the design applications. Hopefully, court decisions may help clear up the ambiguity surrounding the implementation of these criteria. It has further been stated that the Turkish Patent and Trademark Office is unlikely to reject a design application ex officio based on the provisions in the Turkish IP Code since cancellation of a design based on grounds of functionality is only possible through opposition. However, since a design can be rejected outright by the Turkish Patent and Trademark Office ex officio on grounds of visibility, the criteria of visibility and functionality should both be taken into consideration in the assessment of grounds of opposition for designs.
Concluding what has been presented, the seminar on Invisible Features and Functionality of Designs has offered us a comprehensive understanding of the protection of the visible versus invisible parts of designs as well as the protection of designs dictated by technical function from a natural and global perspective.