"It is, of course, up to an applicant as to what features he includes in his design application."
Both the UK Intellectual Property Office ("UK IPO") and European Union Intellectual Property Office ("EU IPO") provide guidance regarding registered design applications, which applicants and professional advisers ostensibly rely upon when filing. However, there is an increasing amount of case law on UK and European Community registered designs which could provide valuable insight as to how these applications should be approached. There has been a recent trend in cases, particularly in the UK courts, where it has been found that registered designs are valid (having been held to be novel and have individual character), but not infringed by the defendant's product.
This trend might suggest that, whilst rights-holders can secure registered protection in respect of their designs (unsurprising given that, unlike trade mark applications, those for designs proceed without assessment or evaluation by the relevant Office), enforceability may be difficult where the registration does not accurately, appropriately or sufficiently reflect the novel and individual features of the design. What is clear, as indicated by the above quote from Lord Neuberger in the UK Supreme Court in PMS International Group Plc v Magmatic Limited1 (which is the leading case on design rights in the UK), is that the right-holder is responsible for the application filed, and it is therefore crucial that applicants give proper thought at the outset to their approach and filing strategy.
Here, we provide guidance on key considerations in filing designs, as well as some top tips based on UK and EU IPO guidance, recent case law and our experience both from the perspective of those filing the applications and those seeking to enforce registered designs. Please note that this guidance is intended to act as a supplement to, and not a replacement for, the existing guidance provided by the UK IPO and EU IPO (which can be found on their respective websites2 3) and is based on case law as at the date of this article.
1  UKSC 12 2 UK: https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/507951/DF2A_fillable.pdf 3 EU: https://euipo.europa.eu/ohimportal/en/what-can-be-a-registered-community-design
Interpretation of registered designs
"... the question must ultimately depend on the proper interpretation of the registration in issue, and in particular of the images included in that registration."
(Lord Neuberger, PMS v Magmatic, UK Supreme Court) In the UK and European Union, the scope of protection for a registered design includes "any design which does not produce on the informed user a different overall impression". Practically, this means that the scope of protection given is potentially broader than the illustration on the register i.e. it covers not only identical designs, but similar designs. Whether the scope of protection is actually broader will depend upon the "proper interpretation" of the registration. This "proper interpretation", which might seem like quite a simple task, has become a more complex process as a result of a number of English court decisions; what appears on the register no longer seems to be the beginning and end of the assessment. Therefore, it is incredibly important for applicants (and their advisers) to carefully select how their design is represented on the register.
Line drawings It was confirmed by the Supreme Court in PMS v Magmatic, discussing The Procter & Gamble Company v Reckitt Benckiser (UK) Limited5, that line drawings are generally the most suitable form for designs which seek to protect only the physical shape of a product i.e. "shape only" designs. Line drawings were also noted as being less appropriate for showing colouring, ornamentation and decoration. PMS v Magmatic also states that:
"a line drawing is much more likely [than a CAD image] to be interpreted as not excluding ornamentation". The Supreme Court went on to quote Dr Schltelburg, who noted that "the broadest claims can be achieved by [line] drawings showing only the contours of the design".
"... the selection of the means for representing a design is equivalent to the drafting of the claims in a patent: including features means claiming them."
(Dr Martin Schltelburg, co-ordinator of the EU IPO's Designs Department)4
Choice of format
Applicants should bear in mind that the proper construction or interpretation begins with the graphical representation of the product in the registered design. It is crucial to choose the correct form of illustration (depending upon what the applicant is seeking protection for) to improve the chances that the proper interpretation by the court will provide sufficient protection. Although all registered design applications must include a `representation' of the design that is `suitable for publication', the applicant has a choice of the method of representation. The applicant needs to consider the most effective and accurate means of representing its design. In practical terms, these representations include line drawings, Computer Assisted Design (CAD) images, or photographs of the design as it actually appears. The illustrations must be all of the same type, so it is important to pick the correct format.
Above An example of a line drawing filing (not all views replicated) from the Community registered design in dispute in P&G v Reckitt Benckiser
Although the Supreme Court's dictum is not particularly clear, the addition of Dr Schltelburg's teachings suggest what the Court is trying to say is this: line drawings which bear no ornamentation will cover designs which both lack ornamentation and have ornamentation; an absence of ornamentation on a line drawing is less likely to be interpreted as a feature of the design. This means that, where a registered design which is "shape only" is used in an infringement action, the comparison will focus on that shape without consideration of any surface decoration, ornamentation or other visual features. However, there are some instances in which even line drawings may be interpreted as specifically claiming a lack of decoration, but this will be rare. In Samsung Electronics (UK) Limited v Apple, Inc.6, the Court of Appeal, agreeing with HHJ Birss (as he then was) at first instance, confirmed that the absence of ornamentation may be a feature of a design filed as a line drawing.
4 The Community Design: First Experience with Registrations 5  EWCA Civ 936 6  EWCA Civ 1430
In that case, the line drawing included only one or two small features, but the inclusion of those minor features specifically within the line drawing meant that the "natural implication" was that having no other ornamentation was an intended feature of the design.
Above Another example of a line drawing filing (not all views replicated) from the Community registered design in dispute in Samsung v Apple.
CAD images Until PMS v Magmatic, practitioners and rights-holders alike probably thought that CAD images which lacked ornamentation would receive the same scope of protection as line drawings which lacked ornamentation. Although in theory, the 3D images simply show a representation of a product which would otherwise be represented by a 2D line drawing, absent of any colour or ornamentation, the Court held that a CAD image is not necessarily to be interpreted in the same way as a line drawing. As suggested above, CAD images are more appropriate than line drawings where the applicant is seeking to protect surface decoration and/or ornamentation, because they can:
"easily show subtle shadings and contours, as well as decoration, such as colours and ornamentation".
As a result, where a CAD image lacks ornamentation in the illustration filed, it may be more readily interpreted by the Court as lacking ornamentation, i.e. absence of ornamentation may be a specific design feature. This makes sense, given the ease with which CAD images can show ornamentation and decoration. Therefore, the Court is seemingly more ready to interpret the image as specifically claiming a lack of ornamentation where none is present. Therefore, if an applicant is wishing to only seek protection for the shape, and may decorate the product, line drawings are preferable. Where the absence of ornamentation is a specific feature such as creating a sleek and streamlined look or else where the decoration is a key feature of the overall design, a CAD image filing would be more suitable.
Photographs Photographs, like CAD images, are useful for showing shading and contours, as well as colours and decoration. However, it is widely acknowledged that photographs will tend to provide the narrowest scope of protection
"a photo specifies not only the shape, but the surface structure and the material... narrowing the scope of protection accordingly"
The above quote from Dr. Schltelburg therefore illustrates that the scope of protection is unlikely to extend beyond the graphical representation on the registration. Practically speaking, there are merits to both line drawing and CAD image filings. However, we would generally not recommend filing photographs of products unless (i) you require only a very narrow scope of protection (which will be rare), or (ii) there is no feasible alternative way to represent the product which is sufficiently detailed to provide protection for the novel and individual parts of the product.
Above An example of a CAD drawing filing (not all views replicated) from the Community registered design in dispute in PMS v Magmatic.
"The registration holder is entitled to choose the level of generality at which his design is to be considered. If he chooses too general a level, his design may be invalidated by prior art. If he chooses too specific a level he may not be protected against similar designs."
(Lewison J, P&G v Reckitt Benckiser, UK High Court) The level of generality in which a design is depicted is something to bear in mind; there is no practical solution, because there are risks (and merits) in adopting either too general or too specific an approach. More generalised depictions with fewer details mean they could potentially `catch' more infringing product designs which fail to create a different overall impression than the registered design. This is because if a design is too specific, relatively minor changes and variations will result in a different overall impression and the latter design may be found to not infringe. However, too general a representation with very few details and features bears two major risks, which are borne out in the case law and in practice. As regards an argument on infringement, such as that overleaf in Samsung v Apple, the registered design may fail to provide sufficient protection because the presence of any details and features may be enough to create a different overall impression. In that case, a few additional features on the allegedly infringing tablet including the presence of the alleged infringer's trade mark on the front and back was sufficient to create a different overall impression to the informed user. In the view of the court, HHJ Birss remarked that Apple's tablet was a "cool design", where Samsung's was "not as cool", which played a part in his decision that the overall impression produced was different. There is also the issue, briefly mentioned in P&G v Reckitt Benckiser, that too general a level will leave the registration open to a validity attack. This is because the design lacks either novelty or individual character over the design corpus (i.e. those designs that existed in any field before the filing of the design for which protection is sought). By filing a more specific application, it will be harder for potential infringers or third parties to find a prior design containing all the features of the design applied for. A "mosaic approach" picking pieces from various earlier designs and combining them in an attempt to invalidate the later design is not permitted (see Karen Millen Fashions Ltd v Dunnes Stores7), so parties seeking to invalidate a design on the basis it is not new and/or lacks individual character may struggle if one example cannot be found which incorporates a number of specific features.
Whole versus part
Applicants will be tempted to file applications which constitute a representation of the whole of the product to which the design relates. More sophisticated applicants may, in addition to the representation of a whole product, file applications which represent the design of part of a product. Both approaches have their relative merits. What is clear, regardless of which approach is taken, is that applicants should clarify in the representation those elements of the design which it considers to be features of the design that are novel and of individual character. More often than not, it will be these features that third parties, including competitors, will seek to mimic in their own products. If this approach would necessitate the filing of applications for representations of part of a whole product, e.g. because the entire product is relatively complex, we would recommend that applicants do so. Frequently, infringers will alter or remove those less striking or valuable features of a design whilst replicating or using those that are novel and of individual character, meaning that whilst the design's key features have been reproduced, the overall impression may be different. Seeking registration of those novel and individual parts means that rights-holders can rely on those more specific registrations, irrespective of the overall look of the product. Although this may be difficult where an application relates to one specific feature, as anyone seeking to invalidate the registration need only concentrate on finding one earlier example of the feature, clever filing strategies may prevent this. By way of example, the Trunki case in PMS v Magmatic could have been broken down into a number of individual features, such as the particular locking mechanism hidden under a cover on the front of the case, or the ridge running around the centre of the case. Similarly, in P&G v Reckitt Benckiser, an application could have been made in respect only of the nozzle without the canister. This may not work in every circumstance, but applicants should bear it in mind where they are aware that their product has particular features which are novel, have individual character and would be particularly attractive to competitors to copy.
Above In Sealed Air Limited v Sharp Interpack Ltd and another, the Claimant had to rely on its UK unregistered design right in its packaging designs should it have filed for design registrations as illustrated?
7 Case C-345/13
Leading on from the above, one way in which filings can be done for part of a product design is by excluding certain features from the representation. This means that a representation may if sufficiently clear and detailed be adapted and edited (by the following means) so that protection is sought for only parts, and the feature's placement on the whole product is merely as illustration.
This can be depicted in a number of ways, which are in varying degrees recommended by the UK and EU IPO. (a) Disclaimers or limitations The UK IPO recommends the use of disclaimers or limitations alongside an illustration to define the scope of protection given to the design. Examples of useful disclaimers include excluding a pattern or colour from a filing where the applicant does not seek protection for the particular pattern or colour.
An example of a suitable disclaimer might be: "no claim is made in respect of the pattern shown on the surface of the product in the illustration".
However, it is important to bear in mind that the EU IPO guidance does not allow for the use of disclaimers and limitations. Although a description can be provided when European Community design applications are made, the EU IPO guidance states that no explanatory text, wording or symbols can be used in the design views, and the description provided will not affect the scope of protection. Disclaimers must therefore be apparent from the representation of the design itself.
Because of this, the EU IPO makes several recommendations for `visual' disclaimers (described in further detail below), which are also in use at the UK IPO. (b) Broken lines Broken lines otherwise called dashed or dotted lines are commonly used as a means of disclaiming those particular aspects of a design for which the applicant is not seeking protection. They are a recommended identifier of excluded features according to the EU IPO.
However, recent case law suggested that using broken lines may not simply indicate excluded features. Broken lines have also been interpreted as identifying features which appear visible under an opaque, transparent or translucent sheet (Kohler Mira Ltd v Bristan Group Ltd8) or demarking a screen or border within a flush surface (Samsung v Apple).
Although the EU IPO does not recommend using broken lines for non-visible lines or features (as in Kohler Mira v Bristan), it does recognise that broken lines might also be used to illustrate separations, which are used to indicate that the precise length of a design (e.g. a pipe) is not claimed. Even though technically a description will not affect the interpretation of the filing, it might be worthwhile indicating the purpose of including the broken lines in both UK IPO and EU IPO filings. However, this becomes a double-edged sword. If the applicant's intention at the outset is clearly stated, it will ring fence the rights-holders monopoly and provide assistance to anyone attempting to interpret the registration. It may then be difficult for an applicant to argue anything else if it came to enforcing the design, if a third party has chosen to purposefully design around the registration on the basis of the limitation put in place by the broken lines. (c) Colouring, shading, blurring or emphasising Dr Schltelburg has suggested:
"Where an applicant wishes to exclude features which are shown in the representation for explanatory purposes only, but do not form part of the claimed design, he may disclaim those auxiliary features by depicting them in broken lines (for drawings) [as discussed above] or by means of colouring them (for black and white drawings or photos) or encircling them (for any drawing or photo)".
Colouring, shading and blurring are, again, all recommended by the EU IPO as a means of excluding features from protection. These types of visual disclaimer must be clearly distinguishable and perceptible in order to be accepted as claiming and/or disclaiming specific features. (d) Boundaries Boundaries are used to indicate that no protection is sought for the features not contained within the boundary. Again, the boundary must be clearly indicated and must be used carefully to avoid including any features other than the design in the boundary.
Above An illustration of a filing making use of broken lines in Kohler Mira v Bristan Group.
8  EWPCC 2
Applicants have a choice in how they colour their representation, and there are some well-known (and useful) tenets regarding choosing whether to file in black and white or colour. Where colour is a feature of the design (in whole or
in part), it (or those parts) should be filed in colour. Where monochrome is a feature of the design, it
should be filed in monochrome against a uniform (differently coloured) background. If a filing is monochrome, this will cover all colours. If a filing is in colour (without a disclaimer or limitation in respect of UK filings), the design will be interpreted as claiming the colour(s) as filed. Where colour does not form part of the application, for ease so that the same representations could be used under the European and UK filing regimes it is conventional, rather than disclaiming against a colour representation, to file the design in black and white. The other lesson to take from PMS v Magmatic regards the interpretation of monochrome CAD images shown in varying shades of grey. In that case, the body of the Trunki was depicted in a lighter grey than the wheels. Although, as noted, monochrome filings will cover all colours, the use of one shade of grey for the body and another for the wheels was interpreted as demonstrating that the colour of the wheels and body must be juxtaposed, i.e. different colours. This impacted on the Court's decision on infringement; the alleged copy had wheel-covers and a body of the same colour, one factor which led the Court to find that Magmatic's registered design was not infringed. Therefore, although CAD images can be useful in showing contours and shading, it should be borne in mind that different grey tones may also be interpreted as covering juxtaposed colours.
Registered design litigation
One final note on filing design applications relates to how rights-holder seek to enforce their rights. It is common practice that, in infringement actions based on registered designs, claimants will also make claims based on any concurrent UK and/or Community unregistered design rights. This has, in a number of instances including Magmatic v PMS in the first instance decision9 resulted in a finding of infringement in respect of the unregistered rights, even where a claim based on the registered designs has failed. There are a few key lessons in relation to this type of litigation to note: Establishing rights in relation to unregistered design
rights can be more difficult than being able to rely on registered designs and can therefore incur more costs and time. It may be wiser at the outset to think about registering designs, rather than seeking to rely on unregistered rights. The rights registered or unregistered in the same product often subsist in exactly the same features, but these may not have been clearly depicted in the illustration, and therefore unregistered rights in the design have to be relied on. This clearly demonstrates the importance of picking the right format to file in, and choosing the right features for which to seek protection. In a number of cases, the comparison between the claimant's and defendant's products has been conducted when the Court has had the actual articles in front of them. This is because, although the comparison for registered design infringement should be between the registration and the alleged infringement, the Court will usually require sight of the products in order to conduct the assessment for unregistered design right infringement. Although in registered design cases, the Court is not supposed to be influenced by the appearance of the actual product particularly where it differs from the depiction on the register it is human nature to bear the genuine article in mind. This may be advantageous to rights-holders where the infringement is closer to the actual product than the depiction on the register, but can also backfire where the actual product includes decoration or ornamentation which the registration lacks, as occurred in Samsung v Apple and PMS v Magmatic. Careful consideration should therefore be given when issuing claims based on both registered and unregistered rights in designs.
Postscript: On 2 August 2016, the UK IPO confirmed the government's intention to ratify the Hague Agreement in a national capacity (having previously been a signatory through the European Union), which aims to provide a practical business solution for registering up to 100 designs in over 65 territories through one single international application. The UK IPO is working through the steps of joining the Hague Convention and hopes to introduce the service within the next year.
Bond Dickinson's Intellectual Property Department comprises specialist attorneys and litigators who have vast experience in dealing with the registration and enforcement of registered designs.
If you have any queries in relation to this note, or more generally about seeking protection for or enforcing your designs, please do not hesitate to contact Patrick Cantrill, Rose Smalley, William Sander, Andrew Hall, Rachel Hearson and Amy Galloway.
9  EWHC 1925 (Pat)
Five top tips to consider when filing a design
Although there is no guarantee of how a design will be interpreted by the Court when a right-holder seeks to enforce the design against a third party, it is clearly crucial to ensure that the graphical representation of the product is carefully considered before filing.
5. Consult a specialist for
2. Whole or part
3. Excluding features
Read more detail overleaf...
Think about the choice of format, whether line drawing or a CAD image, and we would recommend trying to avoid using photographs. If the main aim is to protect the `shape' of a product, use a line drawing; if ornamentation, decoration or colouring is more important, a CAD image may be more suitable. When applying to register the surface design of a product, use CAD if available, or photographs as a last resort.
2 Whole or part
Designs are relatively cheap protection so, if the resources are available, it is strongly recommended that the whole design, and also those parts of the product which are novel and have individual character, are registered. Those on a tight budget may want to consider either registering the whole or only distinctive parts of their product, but this would leave would-be infringers with scope to circumvent the designs.
3 Excluding features
As important as it is to accurately depict what is included in the design, it is equally important to make clear what does not fall within the scope of protection. Broken lines, colouring, blurring, shading and emphasis are all valid methods of excluding parts of a design, whilst written disclaimers may also be included on UK designs (but not Community designs).
If colour is key to the design, the filing should be in colour. If no colour protection is sought, or instead protection is sought for all colours, the design should be submitted in black and white. Applicants should be aware that where black/grey/white shading is used, varying shades may be interpreted as depicting juxtaposing colours.
5 Consult a specialist for advice
A registered design application may appear simple to complete, but if it is not done correctly it could be of little value; and as has been discussed and demonstrated above, there is a lot to consider when seeking to register an appropriate and effective design. For advice on the best method to use in a given situation and its application, a specialist should be consulted.
Copyright 2016 Bond Dickinson LLP. All rights reserved. This communication is provided for general information only and does not constitute legal, financial, or other professional advice so should not be relied on for any purposes. You should consult a suitably qualified lawyer or other relevant professional on a specific problem or matter. Bond Dickinson LLP is authorised and regulated by the Solicitors Regulation Authority. BON.DIC.1934