The UK design sector is extremely important to the UK with the Design Council’s Design Report of 2015 suggesting that the UK’s design economy generated over £70 billion in gross value added (GVA). The ability to protect intellectual property is vital and for the design sector the registered design right is a crucial available means of protection.
The recent Trunki decision at the UK Supreme Court made headlines recently with some designers fearing that the decision would cause uncertainty within the design industry (see, for example, “this decision will create chaos and confusion”; the “blow to Britain’s design community”; and, “this plunges design law into an abyss”).
Despite the dire comments that followed the Trunki decision, registered designs are still an important protection option for designs and an important weapon against infringers. One of the main take-away points from the Supreme Court decision however is the manner in which a design is represented when an application for a registered design is made.
The UKIPO has now published guidance (Designs Practice Notice (DPN) 1/16) in light of the Supreme Court Trunki decision (SC Trunki decision) on the filing of UK registered designs. The guidance highlights the main areas which design applicants need to consider including the available options for, and the impact of, different types of design representation.
The Practice Notice highlights that apart from a requirement that a design representation should be “suitable for publication” the applicant for a design is free to choose the format they consider to be the most effective for representing the design. The Notice additionally highlights that the majority of designs are submitted as pencil drawings, black line drawings, photos of CAD images.
The Notice reminds applicants that they should be careful which selecting representations to make sure they accurately reflect what the designer wants to protect. The Notice then goes on to discuss the consequences of selecting one form of representation over another.
At paragraph 5 of the Notice the UKIPO comment that the Trunki SC judgement emphasises the distinction between designs which are intended to protect shape alone and designs to protect shape and other features. Line drawings are the preferred way of capturing shape only (see paragraph 6 of the Notice).
The tension between using line drawings to protect shape only (in accordance with Procter & Gamble) and the use of line drawings to protect shape and “minimalist” ornamentation (as per a discussion in PMS v Magmatic, see paras 44 and 60 of the judgement) is discussed in paragraphs 7 to 9 of the DPN.
Under the section of the notice relating to the practical effects of the SC judgement the UKIPO states that the Trunki decision should not be interpreted as a discouragement against the general use of CAD representations but it is important to bear in mind how the Courts may interpret different types of representations in different ways. In the SC Trunki decision the grayscale imagery used in the CAD representation was interpreted as shape plus something more whereas in Procter & Gamble line drawings were seen to be a suitable means of capturing shape only.
The UKIPO Notice also flags up an important option available to design applicants, namely the filing of an application with multiple designs. Filing a multiple design application offers a designer the ability to vary the level of detail shown by the representations in each of the designs within the multiple design application and also to vary the type of representation used. In this way it is possible to try and secure a broad range of protection for a particular design. It is noted that the fees for filing UK designs are expected to fall dramatically in the near future thereby making a multiple design application a good value for money option.
The Notice concludes with a suggestion that applicants need to be careful when selecting design representations and that the designers may benefit from the advice of qualified legal professionals prior to submitting an application.
Mark Richardson 9 June 2016