Following the Supreme Court's ruling in PMS International v Magmatic (discussed in our previous article) (otherwise known as "Trunki"), the UK IPO has issued a designs practice notice which highlights useful steps applicants can take to maximise the protection of their designs.
Aspects of the Trunki ruling suggest that designs can be protected as "shape only" and "shape and more". Procter & Gamble v Reckitt Benckiser [2007] FSR13 was cited as an example of a case where line drawings were successful in protecting a "shape only" design. In contrast, the computer-aided design (CAD) representations that were the subject of the Trunki case were considered by the Supreme Court to protect "shape and more". This was a result of the tonal differences which the CAD representation introduced.
The UK IPO goes on to make the point that when considering the best way to represent a design, it should be remembered that representations consisting of photographs, CAD drawings and the like may well include more detail than would a simple line drawing. This additional detail, even if inadvertently included, could be taken into account by a court and therefore result in narrower overall protection.
If protection for "shape only" is required, then the UK IPO recommends filing simple line drawings, devoid of any colour or tonal detail and without visible surface decoration. For maximum protection, it may be best to file a multiple design application comprising a set of line drawings plus an additional set of CAD drawings. The UK IPO makes it clear that a single design must not comprise a mixture of both, since this would give rise to non-conformity between the views, and may result in an objection.
The above advice seems relatively straight-forward. However, a further aspect of the Trunki decision was the suggestion that the absence of surface decoration could be considered to positively indicate a "minimalist" design. In other words, where simple representations such as line drawings are used, this may result in a Court interpreting the absence of surface decoration as an intended feature, rather than as an attempt at "shape-only" protection.
In order for applicants to steer their design boat between Scylla and Charybdis resulting from this apparent contradiction, the UK IPO suggests that applicants make use of disclaimers or limitations, in order to obtain broader protection. These may be presented in graphic form, by blurring out parts of a design for which protection is not sought, and which are not intended to limit the scope of protection, or (perhaps more usefully) in text form. As an example, the phrase "protection is sought for the shape and contours alone" may be added to each of the representations and/or included in section 8 of Form DF2A, in order to clarify the intended scope of the design. Of course, care must be taken when phrasing a disclaimer so that it is pitched at an appropriate level.
Unlike under European Community Design law, disclaimers and limitations used in UK design registrations are taken into account by a court or tribunal when determining the scope of the design. They are therefore an effective way of avoiding any confusion over what the representations are intended to protect.
It is apparent that the long-anticipated Trunki ruling has identified potential pitfalls in design applications. This recent practice notice is therefore a welcome reminder that applicants can take steps to clearly indicate the way in which they wish to protect their designs, by careful consideration of image type, and by the use of disclaimers and multiple design applications. With official fees now set at just £60 for a single design and an extra £40 for each additional design, UK design protection is still an extremely useful and cost-effective form of intellectual property protection. Also, whilst EU-wide Community Designs have their own advantages, the more flexible UK approach to disclaimers (in particular, verbal ones) means that UK design protection should be considered in parallel with EU design protection when considering how to maximise protection.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
