A design is not new if an identical design, which could be known to the circles specialised in the relevant sector in Switzerland has been made available to the public prior to the filing date or the priority date (Article 2 paragraph 2 DesA). As a consequence, identical prior designs destroy novelty (BGE/ATF 134 III 205, 209 consid. 5.1, “bagues”; FF 2000, 2598; J. Herren, in: C. Weinmann/P. Münch/J. Herren [eds.], Schweizer IP-Handbuch, 2013, § 28 Designregistrierung N 4.4). According to the Supreme Court, the concept of identity has to be construed strictly. This means that in particular the features not contributing to the overall appearance of the object in the view of the target public, i.e., the persons interested in the purchase, have to be disregarded. Notably the size of the object and the attention given to it are relevant. Novelty will not be satisfied if the design is different from another one only by barely detectable details. On the contrary, novelty may come from a specific combination of features which together determine the appearance of the object, even if each of these features considered separately could not satisfy the novelty test (BGE/ATF 134 III 205, 209 consid. 5.1, “bagues”). Novelty can therefore not be destroyed by an examination as a “patchwork of individual features” with the argument that the different separable features have been known before (R.M. Stutz/S. Beutler/M. Künzi, Designgesetz, DesG 2 N 91).

• b) Non-obviousness
• c) Inventive step
• d) Individual. character

(See answer regarding originality.)

In the three official languages of Switzerland Article 2 DesA uses the terms “Eigenart” in German (which corresponds to “individual character” in English), “original” in French and “originale” in Italian. These terms are different from the terms used in copyright law, namely “individuellen Charakter” in German, “caractère individuel” in French and “carattere originale” in Italian. In the context of the Swiss DesA, the English terms “individual character” and “originality” are essentially synonymous and describe a standard that is different from the one used in copyright.

A design does not have individual character/originality if the overall impression it produces does not differ or differs only in insignificant aspects from a design that is or could be known to the circles specialised in the relevant sector in Switzerland (Article 2 paragraph 3 DesA). According to the Supreme Court, the criteria under Article 8 DesA, according to which the scope of protection of the design right includes designs that have the same essential features and thus produce the same overall impression as a design already registered, are also applicable in this regard. Therefore, the overall impression does not come from details of the design to be considered, but from its essential features. If the compared designs produce a general overall impression of similarity, the originality has to be denied, even if a significant number of details are different from the previous design. The Supreme Court furthermore states that the similarities rather than the differences have to be examined. The creative activity at the origin of the design is not relevant per se as a shape giving an overall impression of novelty is necessarily the result of a creative activity. Reference should be the perception of the potential purchasers; the overall impression is the impression remaining on a short term in the memory of said persons. However, in case of a dispute the judge can base its assessment on a direct comparison of the contested design with pre-existing models (BGE/ATF 134 III 205, 209 consid. 5.1, “bagues”). According to legal scholars, as third parties must be able to continue to use pre-existing shapes, originality presupposes that the essential features of the considered shape are clearly different from what already exists. However, as it is the case for novelty, an examination as a “patchwork of separate features” is not permissible. Therefore, even if a design consists only of a combination of pre-existing features, originality can be admitted if the design distinguishes itself from pre-existing designs (Stutz/Beutler/Künzi, Designgesetz, DesG 2 N 105, 107).

• f) Aesthetic
• g) Ornamental
• h) Other, namely …

Article 4 lit. c DesA states that “A design may not be protected if the features of the design are dictated solely by the technical function of the product.” The technical function of the “product” as such is the decisive element, not the technical function of a single feature of the design. For a design whose overall appearance is dictated solely by its technical function, all features are deemed to be dictated solely by the technical function of the product, and therefore the design is excluded from protection (see also answer to question 5 [b] and [c]).

The DesA does not address the question of the effects of certain design features that are functional. Under the act preceding the current DesA, case law had introduced the practice that for designs of which certain features were the result of a technical function, only “partial nullity” applied if the remaining features of the design still justified a legal protection for the design. However, the applicability of this old case law – based on a differently worded article regarding technical effect – to the new law is disputed among legal scholars, and there is no current case law on the subject (see also answer to question 5 [c]).

According to the case law of the Supreme Court, the exclusion of Article 4 litera c DesA corresponds to the absolute ground of exclusion from protection as shape marks for forms that that are technically necessary (Article 2 litera b of the Trade Mark Protection Act, TmPA; BGE/ATF 133 III 189 ff. consid. 6.1.2, “Schmuckschatulle”). If there is no technical alternative, a design cannot be protected. If there is another technical possibility, which however implies a less convenient execution, is less resistant, or more expensive (for instance even small additional manufacturing costs of 1.3–4.9% for interlocking building blocks have been considered as “more expensive” in this context and therefore the shape trademark as technically necessary, see decision 4A_20/2012 of the Swiss Supreme Court, dated 3 July 2012, “Lego IV [3D]”), the design is also excluded from protection. In such a case, a competitor cannot be expected to renounce the technically most obvious and best suited shape (BGE/ATF 133 III 189 ff. consid. 6.1.2, “Schmuckschatulle”; BGE/ATF 134 III 205 ff. consid. 6.2, “Bagues”).

• d) The need to achieve the product’s technical function was the only relevant factor when the design in question was selected
• e) Other, namely …

Functional features are part of the overall design. Even a particular combination of only functional features may form a basis for a valid design, as long as the features of the overall design are not dictated solely by the technical function of the product. This means that the combination of features may not be solely dictated by the technical function of the product (see also answer to question 5 [a] and [b]).

(see answer to question 6)

• b) The availability of alternative appearances for the portion to obtain the same functional result
• c) The need to achieve the product’s technical function was the only relevant factor when the portion in question was selected
• d) Other, namely …

The Swiss Group has the opinion that no improvement is necessary in regard to the definition of the meaning of the term “design” in the Swiss law.

The current definition of a “design” as provided in Article 1 DesA is generally undisputed. The given definition was inspired by and essentially corresponds to the definition provided by Article 1 litera a of EU Directive 98/71/EC of 13 October 1998 on the legal protection of designs, which is also identical to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs. Thus it is compatible with the definition of design for the most other European countries. Furthermore, although the definition differs from the definition as

provided by the previous law as in force until 1 July 2002, legal scholars are of the opinion that for interpreting the legal definition of a design, the practice under preceding law is still applicable. In contrast to the corresponding EU statutes, no particular definition is provided for the term “product” (Article 1 litera b and c of EU Directive 98/71/EC). The Swiss Group has the opinion that such a definition is actually not necessary for legal security.

The requirements of protection of a design are given by Article 1 DesA (legal definition of a design), Article 2 (novelty and individual character as basic requirements), Article 3 (non-prejudicial disclosures), and Article 4 (reasons for exclusion from protection). Article 4 litera c particularly defines the exclusion of protection in regard to technical functionality, which is the topic of question 9 (c).

A number of significant questions have so far only be answered by decisions of the Swiss Supreme Court and are not stipulated in the law, e.g. the test for infringement/scope of protection of a certain design (BGE/ATF 129 III 545, “Knoblauchpresse”), the assessment of individual character/originality of a design in regard to existing, older designs (BGE/ATF 134 III 205, “bagues”); and the handling of two designs with different application date that have an overlapping scope of protection (BGE/ATF 138 III 461, “boîtier protubérant”).

The treatment of technical functionality of single features of an overall design, as well as technical functionality of the combined features of an overall design, is well established. The majority of the Swiss Group is of the opinion that the current approach is logic and practical, and that another approach is neither necessary nor desirable. A minority expresses the view that the relevance of technically functional features should be treated differently in trademark law and in design law, and that design protection should be awarded more liberally than trademark protection for designs where the overall impression is determined by technically functional features. E.g., design protection should be available if an alternative version exists, although this alternative would cause additional costs, which, however, are not substantial for the end-user price of the object.

Yes. This requirement prevents a design from being protected, which is already publicly known (by the relevant public). Diversity or distinct differences should be criteria which are required for novelty. Just an identical or almost identical design would destroy novelty and the design in question would not be considered novel (E. Marbach, in: R. von Büren/E. Marbach/P. Ducrey [eds.], Immaterialgüter- und Wettbewerbsrecht, 2008, N 446 f.).

Attention should be paid to disclosure by the right holder himself. Only in some countries does the right holder enjoy a grace period in which to register the new design even after he/she has disclosed or published it. This method should be supported because of the right holder’s legitimate interest in conducting a market test before attempting registration (see Marbach, N 452 ff.). To the extent possible, a uniform grace period should be part of a harmonization.

No. The Swiss Group is of the view that “Non-obviousness” is an aspect of the requirement “originality”. There is no need to define it as a stand-alone requirement.

No.

The decision whether an additional requirement should have an “individual character” or “originality” in the Swiss Group’s view is a question of semantics, because in practice these two terms are difficult to distinguish. The three official languages of Switzerland (German, French, and Italian) in which the Swiss Design Act is enacted use different terms (see question 3 above). However, no language has precedence over the other, which creates some uncertainty. The Swiss Group prefers the term “originality” to distinguish this requirement from the term “individual character” which is used in Swiss copyright law, but also has a different meaning in Swiss copyright law than in Swiss design law. In general, “originality” is not understood as a qualifying criterion. Even a trivial design requires originality as long as the design is not a result of its technical function and differs from known designs (see BGE/ATF 133 III 189 ff. consid. 3.1, 191 with further references).

• e) Aesthetic
• f) Ornamental
• g) Other, namely …

The decisive point is the interpretation of the expression “dictated solely by its technical function”.

In the opinion of the Swiss Group, a design should be deemed unprotectable only if no alternative fulfilling the same technical function but having a different overall appearance exists. In other words, design protection should be denied if the overall appearance represents the only reasonable embodiment.

If several alternatives exist, but each of them is the only one to provide a specific improvement of the overall technical function (e.g., simple producibility vs. long lifetime) each alternative would be deemed “dictated solely by its technical function” and thus unprotectable. If, however, an alternative version would cause additional costs, would be less convenient, or less resistant, but where such disadvantages are not substantial for the end-user of the object, design protection should be available nonetheless.

Since objects typically combine aesthetic and technical aspects, a broader interpretation of the expression “dictated solely by its technical function” would unduly exclude many objects from design protection. Thus, the Swiss Group considers a broad interpretation as inadequate.

A design is more than a sum of its portions. The overall appearance of a design can be influenced by any of its portions, including technically dictated portions.

In the opinion of the Swiss Group, it would be a wrong approach to examine the design by first rejecting the technically dictated portions and then examining the remaining portions with regard to novelty and originality. In such an approach, a design of which each portion was dictated solely by its technical function would be unprotectable, of course.

At least theoretically, it seems to be possible that a plurality of technically dictated portions can be arranged in several different ways, the arrangements having different overall appearances. If these arrangements fulfilled the same technical or functional result, they should not a priori be deemed unprotectable (cf. the response to question 16 [a]).

The availability of alternative appearances should be the only criterion for deciding whether or not a design is deemed unprotectable as being functional. If an alternative appearance that can obtain the same functional result does not exist, the design should be deemed unprotectable; if such an alternative appearance does exist, the design should be protectable (see also the response to question 16 [a]).

Factors considered by the designer when selecting the design can be subjective. In order to guarantee an objective assessment of the design, the Swiss Group does not recommend taking such factors into account.

False. The Swiss Group is of the opinion that functional design portions may add to the overall impression of the design and therefore require proper consideration in design infringement assessments.

False. The Swiss Group is of the opinion that functional design portions may add to the overall impression of the design and therefore require proper consideration in design validity assessments.

True. A functional portion may alter of shift the overall impression of a design. Generally, it may, however, be expected that the informed user recognizes the functional character of a functional portion of the design. Moreover, it may be expected that the informed user attaches only reduced weight to functional portions in the context of the overall impression of the design. As a consequence, when assessing infringement, functional portions may play a less important role than purely aesthetic portions. Excluding functional design portions from infringement assessments a priori and as a matter of principle would unduly narrow the act of creation of the designer. An assessment on a case-bycase basis seems appropriate.

True. Response under 19 (c) applies mutatis mutandis to validity assessments.

False. See response under 19c).

• e) The Group’s current law is unsettled
• f) Other, namely