The Role of the Non-Functionality Requirement in Design Law

Industrial design law protects the appearance of useful articles but not the functional features of the design. This non-functionality requirement is a key element of design protection, and it is in fact a universal feature of such laws. The reason for it is the desire to avoid from undermining patent law provisions, which under certain strict conditions provide protection of functional elements. In practice, however, the non-functionality requirement is difficult to apply. Three major reasons for these difficulties are explored in this paper: The first is that it is hard (or perhaps even impossible) to determine definitively that a design feature is purely functional. The second is that contemporary design tends to combine functional and aesthetic elements, with the result that it is often impossible to separate between the two. The question then becomes whether the design as a whole should be deprived of protection. The third reason is that functionality is an abstract concept that covers everything from the narrow meaning of "serving a technical goal" and the broader (and vaguer) one of "achieving a purpose". To the extent that functionality is understood broadly, it could reasonably be argued that aesthetics is also a function. This broad reading of the non-functionality requirement would empty it of meaning, and consequently a more narrow understanding of the term "functional" is preferred, one that limits it to technical and physical aspects. After analyzing the various difficulties that arise from the non-functionality requirement, the paper discusses a proposed solution, under which non-functionality would no longer be simply treated as a threshold requirement for eligibility for design protection. Instead, in cases that are not clear-cut, the issue would be left to courts to resolve when claims of actual design infringement are brought. This is because a court would be better placed to determine whether a particular feature of the design was functional or not on a case-by-case basis in the context of a competing use. Such decisions would avoid the "whole or nothing" rule of rejecting registration of functional designs, and would accord with the rule allowing challenges to the eligibility of registered intellectual property rights at all times, whether directly or indirectly. The non-functionality requirement would thus function as an open standard norm, similarly to many other intellectual property doctrines that are employed when it is impossible to impose a single rule to cover a virtually limitless range of factual possibilities