Expert Advice from Abel & Imray: What exactly is protected by a Registered Design?
UK and EU Registered Designs protect the appearance of a product. The application process is relatively quick, cheap and easy and this has encouraged many companies to obtain this form of IP protection for their products.
A Registered Design application is filed with graphical “representations” of the design. Photos, pencil sketches, and CAD drawings, in both colour and monochrome may all qualify as suitable representations. However case law teaches us that care should be taken in preparing the representations to ensure that the scope of protection is as broad as possible. Difficulties arise when a product has both a distinctive shape and surface decoration such as contrasting colours or decoration or maybe even simply surface shininess. Does a third party infringe the design if they copy your product’s distinctive shape but use a different surface appearance? What if the appeal of your design is its minimalist absence of surface decoration?
The scope of protection rests on what is shown in the representations and how a Court chooses to interpret them. Careful thought should therefore be given to whether the representations are simple outline drawings, or colour or shaded drawings, and how 3D contours are shown and whether tonal shading is used to accomplish that. There is scope to blur out elements not considered part of the design and to circle elements intended for protection and also to use written disclaimers to clarify the representations, for example to state “protection is sought for the shape and contours alone”. If you remove too many features from the design there is of course a danger that it will no longer meet the requirement of being novel and distinctive. As a practical point it is useful to know that multiple designs (some with more and some with fewer features) can be included in a single application at very little additional cost.
Further guidance on preparing representations may be obtained from the UK Intellectual Property Office (guidance note DPN 1/16) and from your IP Attorney. View Abel & Imray’s profile here.
Two representations from Magmatic’s Community Registered Design No 43427-0001 for their Trunki® ride-on suitcase. The UK Supreme Court had to decide in PMS v. Magmatic (2016) what the design registration covered. Would you infringe if you took the general shape or did the wheels, horns and strap also need to be a contrasting colour? Magmatic lost their infringement action against a copy-cat product. It is likely that Magmatic would have been able to stop the copy-cat product had the representations been simple line drawings rather than shaded CAD renderings.