The Supreme Court, the UK’s highest Court, has rejected an award-winning design company’s appeal against a finding that a competitor’s cheaper versions of their children’s ride-on suitcase designs did not infringe their Registered Community Design. This case will be of great importance to the design industry as it emphasises how everything can ride or fall on the particular image of a design you choose to register.

In this case, the design company, who appeared on Dragon’s Den, had registered an image of the shape of its suitcase which, although it was in black and white (which means changing the colour will not avoid an infringement) featured two-tone black and grey shading. This meant that the design was not just protecting the shape of the design but also the particular surface decoration shown in the registration. Consequently, the Court took into account the fact that the competitor’s designs had stripes or spots on them to make their cases look like other types of animal. The position may well have been different had the registered design just shown the shape of the suitcase without any shading, as it would then have been treated as protecting the shape irrespective of any surface decoration.

The Court also said that the absence of ornamentation or surface decoration could be a feature of a design (as was held to be the case with Apple’s uncluttered tablet design a couple of years ago). What you leave out of a design registration can therefore be as important as what you add in.

Imagine you wanted a design registration to protect a new sofa design. If the image filed shows a photograph of the sofa in a particular fabric, it may well be the case that an exact copy of it in a very different fabric would not infringe. However, if a line drawing showing just the shape of the sofa was filed, it should provide protection for that shape regardless of the chosen fabric on the competing product.

The clear message to design companies wishing to protect their designs is therefore to take great care in deciding what image to file at the Registry. Although a Registered Community Design can be obtained for a couple of hundred pounds, thereby giving protection throughout the EU, as the designer discovered to their extreme cost in this case, that is worth nothing if the registration does not protect the important parts of the design. The Court compared the importance of the contents of the image being registered to the contents of a patent claim, and not many people would risk drafting their own patent without taking specialist advice.

Design law in the UK is already the most complicated area of intellectual property law, given that at least eight separate rights can protect any one design. Designers are creative artists, not lawyers, and yet the clear message behind this judgment is that they need to take specialist legal advice when preparing their design registrations.