The UK Intellectual Property Office (IPO) has issued guidance (Designs Practice Notice 1/16) relating to the protection conferred by Registered Designs in the UK in light of a much-publicised recent decision of the UK Supreme Court (in PMS International Limited v Magmatic Limited, otherwise known as the Trunki decision).
The Trunki decision emphasised, among other points, that the scope of protection afforded to a Registered Design is determined by the representations used in the original application. In particular, a wide range of means of representation (pencil drawings, black and white line drawings, photographs or computer-generated graphic images, e.g. images generated by Computer Assisted Design (CAD) software) are open to applicants, who may choose whichever format they consider the most accurate means for representing the features of the design for which protection is sought. The particular choice of representation is, therefore, crucially important.
In particular, the Supreme Court has reinforced the teaching of existing case law (such as Procter & Gamble Co v Reckitt Benckiser (UK) Ltd) that certain representation formats (such as black and white line drawings) are intended to protect the shape of a product, while alternative formats are intended to protect both shape and other features (such as colour, surface decoration or texture). It is therefore still advisable to submit black and white line drawings when seeking the widest scope of protection for the shape of a product. However, the Trunki decision has muddied the waters somewhat by also suggesting that the minimalist representation of a design (for example, a lack of surface decoration or ornamentation shown in a line drawing) can itself be considered a positive feature of that design. The implication is that if a registered design is interpreted as being "minimalist", an intensely decorated product having the same shape may not be found to infringe the registered design. Unfortunately, the Courts have not provided guidance as to when a simple drawing will be interpreted as an attempt to protect only the shape of a product and when it will be interpreted as an attempt to protect both the shape and a minimalist design.
Nevertheless, the Supreme Court decision has clarified that the scope of protection afforded to line drawings and that afforded to greyscale representations (such as CAD illustrations), of the same product, can be different. In particular, the tonal variation of greyscale images or any other apparently incidental features (such as shading or light reflections) may be interpreted as claiming more than just the shape of the product. For example, in the Trunki case, the tonal variation was interpreted to claim use of two contrasting colours, one represented as grey and one represented as black. It is therefore advisable to avoid use of such computer generated images when protection of only the shape of a product is sought.
In general, the advice is clear that applicants should carefully consider which representations, and which formats, are most appropriate when illustrating a registered design application. If protection of shape only is sought, it is still advisable to file simple black and white line drawings with no shading or tonal contrast. In addition, it is possible to include written limitations or disclaimers in UK registered design applications. Judicious use of disclaimers (such as “protection is sought for the shape and contours alone”) can therefore also be advisable.
The UK IPO also permits "multiple" registered design applications in respect of any number of individual designs (and there are significant cost benefits in submitting a "multiple" application rather than several "single" applications). While it is not possible to use a combination of representation formats in the context of one single design, different formats may be used for each design in a "multiple" application. Accordingly, where possible, it may be advisable to file a "multiple" application containing several designs for each product, each design illustrating the product using a different format. This may lead to the widest possible scope of protection and would also provide the applicant with a choice as to which designs to enforce if necessary. Clients should contact any of our attorneys for specific advice regarding the design protection of particular products.