Design Confusion Post-Trunki?

The UK Intellectual Property Office Publishes Helpful Guidance on the Use of Representations When Filing Registered Design Applications.

Following the recent Supreme Court judgement in PMS International Limited v Magmatic Limited [2016] UKSC 12, otherwise known as the ‘Trunki case’, the UK Intellectual Property Office has published helpful guidance on the use of representations when filing Registered Design applications. The guidance is directly relevant to design applications filed in the UK but will also be useful for Community design applications filed at the EUIPO.

The guidance confirms that applicants for Registered Designs may choose to present a design using whichever illustration format they believe to be the most effective and precise means of representing the design. However, as the Trunki case highlighted, deciding on the illustration format is a more involved exercise than it first might appear. The guidance aims to highlight the importance of exercising careful thought when choosing one format over another, encourages applicants to consider how their design might be exploited, and to consider whether the features in their chosen representations accurately convey what they are seeking to protect.

The Supreme Court judgement in Trunki placed emphasis on the distinction between designs intended to protect shape alone, and those intended to protect both shape plus other features. Older case law (Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936) indicates that line drawings are the preferred means of representing designed intended to protect shape alone. However, the Supreme Court in Trunki noted that it is conceivable that a line drawing may also be interpreted as an attempt to register shape plus minimalist orientation (i.e. the lack of surface decoration being positively intended to be a feature of the design). In Trunki the greyscale representation used in the Registered Design was taken to be intended to protect the shape plus other features such as colour/tonal differentiation. The guidance note reminds applicants that whilst the application process is intended to be accessible and flexible, they should be mindful of the differing interpretations of the courts when it comes to design representations.

The guidance note also provides useful comments on the use and effect of disclaimers and limitations as well as the multiple application route.

Find the guidelines here.

By: Briony E. Pollard

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