Following the recent judgement from the UK Supreme Court in the well-known “Trunki® vs. Kiddee” case (PMS International Group Plc v Magmatic Limited) – reported in our earlier article here – the UKIPO has today (1 June 2016) issued a new designs practice notice, providing helpful guidance to registered design applicants on how best to represent a design in an application. The new designs practice notice (“DPN 1/16”) can be found here.
As the Trunki® decision highlighted, the manner in which a design is represented in the design registration directly impacts the scope of protection afforded by the registration. For instance, in many situations the design owner may not wish the scope of protection to be limited in terms of what colour(s) the product might be made in, or what other decoration might or might not be provide on its surface. In such cases, it is desirable for the design registration to protect the outline shape and contours of the product only (referred to as “shape-only” protection in DPN 1/16). Conventionally, black and white line drawings have frequently been used to signify that “shape-only” protection is sought, and DPN 1/16 confirms that this remains the recommendation (see paragraph 12).
However the practice notice also notes that, in light of the Trunki® decision, a line drawing of a product could potentially be interpreted as an attempt to protect not only the shape of the product, but also the very fact that it is plain and undecorated – i.e. “minimalist” ornamentation. This is a result of the Supreme Court’s comments to the effect that minimalism can be an important aspect of a design and hence the registered design system must be able to cater for it. Whilst few would disagree with this idea in principle, it does pose a risk to the design applicant who could find the scope of their design registration, shown in line drawings, unintentionally limited if their representations are interpreted as excluding surface decoration in this way.
To reduce this risk, it is recommended that where shape-only protection is sought, the design application should include an explicit written limitation to this effect (see paragraph 15 of DPN 1/16). The ability to include a written limitation in this manner is a very beneficial feature of UK designs practice and one which we expect to see applicants make increasing use of. Unfortunately, the same feature is not available under European Community (EC) design law which, whilst allowing for a description of the design to be entered, explicitly indicates that this will not affect the ultimate scope of protection achieved.
Positively, however, UK design applications are extremely cost-efficient and there is therefore an increasingly strong case for protecting key products with both EC and UK design registrations filed in parallel, especially where the “shape-only” question is likely to be a significant issue. What’s more, even though descriptions on EC design applications officially have no impact on their scope, it cannot be ruled out that a UK court would still refer to them for guidance when attempting to interpret a design registration and so best practice would be to consider including appropriate disclaimers and/or limitations here also.
Of course, every design application is different and warrants detailed thought as to how best to represent the design in order to obtain the scope of protection you desire. An experienced designs practitioner will be able to advise on this and help you obtain suitable images of your design to make the most out of your registrations.