Registering a design right can be full of pitfalls for the unwary, as shown in the recent decision of the Supreme Court in the Trunki case (which we discussed here in further detail). The UKIPO has now published guidance for designers on the format of representation that they choose when submitting a design. The guide explains the difficulties which may arise depending on whether a more minimalist line drawing is used, or whether a more detailed photograph or CAD design is used. Using examples from the Trunki case (where the design was in CAD format) and from Procter & Gamble Co v Reckitt Benckiser (UK) Ltd (where the design was a simple line drawing), the UKIPO discusses the possible interpretations that the Court could pursue for the different types of design.
The main area of contention lies in whether the different formats cover just the shape of the design registered, or the shape “and more” (for example, with particular colours or differences in colour, as in the Trunki case where the judges found that one reason for there not being infringement was because the original design was a shape “in two contrasting colours”). Particularly for CAD format submissions, different shades may be assumed by the designer to be merely incidental, but further to the decision in Trunki it is clear that these may be taken to be integral to the registered design right.
Therefore, when seeking to protect the shape only of a design, the guidance specifically recommends using a line drawing, as well as including a specific disclaimer which specifies that it is only the shape that is intended to be registered for protection. Alternatively, another option would be to make a multiple design application, disclosing different elements of the design.
Ultimately, if a dispute arises then it will be for the courts to determine the extent of the design right and the protection given by the form of representation chosen, but this guidance is still a useful step in the right direction. When used properly, a registered design can be a powerful tool for a designer to prevent infringement, but careful consideration needs to be given to the content of any design submitted for registration, and expert advice should be sought to ensure you are protecting exactly what you want to protect.