In the examination of design patent applications and in validity challenges of design patents, “purely functional features” should be excluded from the scope of examination. Accordingly, the question of “What constitutes a purely functional feature?” deserves in-depth exploration. In two recent decisions, Taiwan's IP and Commercial Court (“IPC Court”) set forth its views on this issue.
Although the Judgment in Case No. 113 Min-Zhuan-Shang 15 (hereinafter the “Pudding Strip Tray Case”) and the Judgment in Case No. 114 Xing-Zhuan-Su 9 (hereinafter, the “Liquor Label Case”) respectively concerned a dispute over the ownership of the right to apply for a patent and a dispute over patent validity, the IPC Court adopted a consistent analytical approach in assessing what constitutes a “purely functional feature.” These decisions jointly reveal that the IPC Court is cautious in determining design features as purely functional. Instead, the Court’s analysis centers on whether the creator had freedom of choice with respect to the product’s appearance.
In the Pudding Strip Tray Case, the core issue in dispute was “who is the true creator of the design,” i.e., the ownership of the right to apply for a patent. However, in seeking to challenge the appellee’s status as the design creator, the appellant argued that the design of the pudding strip tray with respect to the “number of strips and their arrangement” was merely an inevitable result of connecting or configuring the design with a square mold, involved no creative concept, and therefore constituted a “purely functional feature” that should not be regarded as part of the design creation.
In response, the IPC Court held that although the pudding strip tray at issue served functions such as “addressing uneven weight distribution and preventing warping at the four sides” and “reducing waste of edge material,” this did not necessarily render the design purely functional. The IPC Court emphasized that the designer could still create variations in form with respect to the number of pudding strips and their arrangement, and thus such features were not “purely functional.” In other words, where functional requirements are satisfied and the designer still retains discretion in choosing the appearance, the features do not constitute purely functional features.
The Liquor Label Case arose from an administrative litigation following a design patent invalidation action. The patentee argued that, in order to allow consumers to recognize from the external label that the product was “whisky plum wine,” the wording appearing on the label of the design patent at issue, such as “梅酒,” “WHISKY,” and “ういすきー” (Japanese: whisky), constituted purely functional features of alcoholic beverage products. Accordingly, such wording need not be examined or compared when assessing novelty and creativity of the design patent against the cited prior art.
However, the IPC Court rejected this argument. The Court reasoned that although these wordings serve the function of indicating the nature of the product, variations in design were still possible with respect to their size, length-to-width ratio, and arrangement. Therefore, they were not “purely functional features,” but rather fell within the scope of the claimed design and should be taken into account when assessing novelty and creativity.
Taken together, these two cases clearly reflect the IPC Court’s position that the mere presence of functionality in a design does not necessarily render a feature “purely functional.” In assessing whether a feature of a design patent is purely functional, the primary considerations are whether functional requirements leave no alternative options for appearance, and whether there remains freedom in design with respect to shape, arrangement, or configuration. Whether in the arrangement of elements in mold design or the layout of packaging design, so long as visual creative space exists without affecting functionality, the IPC Court tends not to characterize such features as purely functional, and instead includes them in the scope of design patent protection and comparative examination.