Following the decision of the Supreme Court back in March 2016 in PMS International Group plc v Magmatic Limited,('the Decision') in which it was held that the 'Kiddee Case' did not infringe the design rights of the 'Trunki' case, the UK Intellectual Property Office ('UKIPO') has now published further guidance on registered design applications.
Traditionally designers have chosen to only register the shape of their designs on the basis that surface decoration or other visual features will be ignored when determining infringement and a wider scope of protection is therefore afforded.
As a result of the Decision, there is now more emphasis on the distinction between designs protecting shape alone and those protecting other features as well as the shape. Applicants should therefore be careful when selecting the form of representation for their designs (i.e. pencil drawings, line drawings, photographs, CAD drawings) to ensure that they do accurately reflect what the design is intended to protect. The UKIPO recommends that designers seek advice before submitting an application.
The UKIPO acknowledges the tension between previous case law affirming that basic line drawings are likely to be interpreted as protecting shape only designs (Procter and Gamble Co. v Reckitt Benckiser (UK) Ltd) and the Decision, which held that the absence of decoration can be a positive feature of a registered design, i.e. a plain undecorated surface intended for protection in its own right.
The UKIPO advises that when seeking to protect designs for shape only, designers use simple line drawings. The UKIPO does not discourage the use of CAD drawings, but notes that tonal differentiation can result in the design being assessed as a registration for both shape and other features and the scope of the protection obtained therefore being limited.
Clearly, Magmatic Ltd is a case in point here, as it was not able to benefit from the intended protection of its registered 'Trunki' design against PMS International Group plc.
To define and clarify the intended protection, the UKIPO encourages use of disclaimers and/or limitations by designers when submitting applications. These disclaimers/limitations can be provided in graphical or written form, for example 'protection is sought for the shape and contours alone'. Further guidance on disclaimers/limitations is available on the UKIPO website.
For designers looking to protect several different aspects of their designs, the UKIPO highlights the availability of the 'multiple application' route as a simple and cost-effective means of submitting different forms of representations in one action.
The UKIPO guidance is a further reminder that the exact interpretation of a registered design by the Courts is fact-specific.
Designers must take great care when selecting the method of representation of their registered design applications to ensure that the required protection is obtained.