Introduction

The registered designs regime protects new and innovative product designs, but only if designers register those designs. However, design registration is sometimes treated as the poor cousin of patent and trade mark registration. Companies do not always pay attention to the nature or quality of the design drawings they file with the Designs Registry. The recent UK Supreme Court case of PMS International Group plc v Magmatic Limited [2016] UKSC 12 (the Trunki case) emphasises the importance of choosing appropriate design drawings in order to avoid limiting the scope of protection conferred by registration.

If the value of your product lies in its visual appearance (its aesthetic features), it is advisable not only to apply for a registered design but also to obtain legal advice so as to avoid the pitfalls highlighted in the Trunki case.

Singapore’s Registered Designs Regime

If you have invested much thought, creativity and resources into creating a new design for your product, you should consider protecting your design by registering it in the markets in which you manufacture and sell your products. You will then be better placed to take action to stop third parties that make, sell and/or import unauthorised imitations in the territories in which you have registered your design.

In Singapore, the registered design regime protects new features of shape, configuration, pattern and ornamentation of an article. Famous examples of designs include the shape of the Coca-Cola bottle and the shape of the Volkswagen Beetle car. In other words, design registration protects what the article looks like, not how it works (which is the purview of patents). A Singapore registered design confers on the registered proprietor a maximum of 15 years’ exclusivity to the design, subject to payment of renewal fees every five years.

During this period of exclusivity, no third party may reproduce or monetise a design that is identical or substantially similar to the registered design in Singapore without the consent of the proprietor of the registered design. It does not matter that similarity between the parties’ designs is merely coincidental or that the third party had no intention to infringe the registered design.

If you have reproduced your design for the purposes of sale or hire on more than 50 articles, and have not registered your design, you will not be able to seek recourse under the Copyright Act or the Registered Design Act. Thus, it is important to seek registration as early as possible.

As with patent and trade mark registration, design registration is territorial in nature. You should register your design in the territories in which you seek protection. Usually, these are the territories in which you manufacture and sell your products. If you wish to seek protection of your design in multiple territories, it may be possible to take advantage of the Hague System of international registration which provides a practical business solution for registering designs in over 65 territories by filing a single international application.

The Trunki case and its impact

The Trunki case is a decision of the UK Supreme Court on a Registered Community Design (with coverage in the European Union (EU) only). The decision is therefore not legally binding in Singapore. However, the Trunki case is still an important one because the law and practice of design registration in Singapore shares some similarities to that of the UK and EU. The Trunki case makes it clear that the extent of registered design protection depends on the images that you have submitted for registration.

In the Trunki case, Magmatic Limited (Magmatic) had obtained a Registered Community Design (RCD) for the design of children’s’ suitcases, which it sold under the brand “Trunki”. The drawings that Magmatic submitted to the European Intellectual Property Office for registration consisted of three-dimensional computer aided design (3D CAD) images in monochrome, grey-scale shading and distinct tonal contrasts for registration of its design. Subsequently, a competitor, PMS International Group plc (PMS), imported childrens’ suitcases that were similar to Magmatic’s RCD, which PMS sold under the brand “Kiddee”. PMS even admitted to being inspired by the design of Magmatic’s “Trunki” suitcases.

Selected images of Magmatic’s RCD and the parties’ actual products are set out below:

Click here to view image.

The UK Supreme Court held that the overall impression given by Magmatic’s RCD was that of a horned animal. On the other hand, PMS’s “Kiddee” suitcases featured insects’ antennae and animals’ ears. In coming to this finding, the court relied on the fact that the CAD images of Magmatic’s RCD were not adorned with any surface decoration. The absence of surface decoration reinforced the horned animal impression. Other differences noted by the court included the tonal difference in RCD wheels not present in the “Kiddee” suitcase. In light of these differences, the Supreme Court held that Kiddee suitcases did not infringe Magmatic’s RCD.

Types of images for registration

The Trunki case is a lesson in the different types of images that could be submitted for design registration. Not all of them have the same scope or effect. As the UK Supreme Court had pointed out, designers should note the differences in the following types of images:

  1. Black and white line drawings: In most instances, black and white line drawings offer the widest scope of protection, as you can use line drawings to protect features of shape, configuration, pattern and ornamentation of your design.

  2. 3D CAD images: 3D CAD images are useful in identifying shading and tonal differences in a particular design. However, if shading and tonal differences are NOT part of the design, 3D CAD images may not be appropriate.

In addition to the above types of images, you may also consider submitting high definition photographs. These are useful in seeking protection of important features of your design that are not so easily reproduced by line drawings. It is important to seek professional advice on selecting the appropriate images so that that they accurately reflect the shape and/or other features that you wish to protect. In Singapore, design applicants are also required to make a Statement of Novelty to declare the features that they claim should be protected by registration, whether such features be of shape, configuration, pattern and/or ornamentation.

Absence of decoration can also be a feature of the design

The Trunki case is also a cautionary tale for designers who use simple basic line drawings in an attempt to seek broad protection for their design. The UK Supreme Court recognises that an absence of decoration can be a feature of a registered design. The UK Intellectual Property Office has thus cautioned designers that it is possible that line drawings may be construed as seeking protection for the shape and the plain undecorated surfaces of the design.

At the same time, if a designer places too many details into his images for design registration, he risks finding himself with a narrow scope of protection. This was exactly what the Trunki designers had found themselves in by submitting CAD images that had shown shading and tonal differences. In order to avoid the pitfalls of Trunki, you should decide what the essential features of your design are, and whether there is a risk that a third party may infringe your design by adding ornamentation.

Conclusion

If design protection were sought in Singapore for a product such as the Magmatic “Trunki” suitcase, it would be necessary to declare the novel features of the design for which protection is claimed. These could very well be both the shape and ornamentation of the suitcase. In order to obtain maximum protection, the designer may wish to consider filing an application for the shape of the suitcase, a separate application for ornamentation on the body of the suitcase and another application for the combination. Different permutations of shape (e.g. animal horns, animal ears and insect antennae) would require registration separately, as would different types of ornamentation (e.g. tiger stripes and leopard spots). It is certainly not possible to conceive all permutations of a design at once. However, designers should consider filing fresh design applications as and when they update their designs or create new variants of existing designs.

Dentons Rodyk acknowledges and thanks Desmond Chew for his contribution in the writing of this article.