There has long been a debate as to the extent to which UK registered design law can protect a product formed of multiple separate items. Under UK law, a registered design protects "the appearance of the whole or a part of a product", which is generally interpreted to mean that the registered design must show a single product. It is, however, acceptable for the single product to consist of multiple components. As one can imagine, this frequently results in a debate as to whether a multi-item product is a product with multiple components or two products.
The UKIPO have recently published a Designs Practice Note (DPN) 01/24 outlining their approach to determining when a design application shows a single product having multiple components (which is allowable) and when it shows multiple products (which is not allowable). The DPN will significantly help design applicants because it makes public the longstanding approach of the UKIPO to the issue. However, it does publicly confirm that the UKIPO does not consider certain types of multi-item designs to be protectable.
The Practice Note states "Factors which may be taken into consideration when assessing if a number of articles make up a single unitary product may be where the appearance or function are complementary to each other and they are, in normal circumstances, sold together as one single product. If the articles also stay together for the normal life of the product, this would be a further indicator that they comprise a single unitary product."
It refers to existing case law (Appointed Person (AP) decision number BL O/374/21) which distinguished between a canteen of cutlery (deemed acceptable as a single product) and a box of eggs (not deemed acceptable as a single product). The canteen of cutlery was considered a single product, even though it is made up of multiple items of cutlery and a box, at least in part because the components of the cutlery canteen are "not only sold together as one product, but will stay together for the normal life of the product" whereas "the eggs will be consumed one by one as needed and the box will then be thrown away."
Other examples given in the DPN of acceptable products are a chess set and a handbag with a detachable strap, while a cutlery set in what appears to be its sale packaging, a toy with its box and a gift basket of toiletries are all shown as examples that would face an objection from the UKIPO.
A result of this approach is that it seems very likely that a design with multiple items will be rejected by the UKIPO if at least one of the items is disposable. Packaging designers in particular will be disappointed to hear that it is unlikely that the UKIPO will allow protection for an item and its disposable packaging together as a single product in a UK registered design. This seems to be the case even if the packaging is designed to be seen with the contents in situ or is designed to display the its contents in a particular way, for example a box designed to display the contents to a purchaser on the shelf or during unboxing.
At least under the practice set out in the DPN, designers will need to apply for protection for the packaging and contents as separate designs. It is important to consider how best to present packaging and other products including disposable components in UK design applications, for example by disclaiming any products shown within the packaging, and filing additional applications directed to the components themselves. This can be done in an application containing multiple designs to limit costs.
If an objection of this type is raised against an application after filing, it can be overcome by dividing the application under section 3B of the Registered Designs Act, removing representations or limiting the application by adding a disclaimer.
The Practice Note also provides a helpful reminder that the figures for a UK design application for a product consisting of multiple components must include at least one view showing the set of articles in its entirety.
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