UKIPO publishes post-Trunki designs guidance
The UK government has published guidance on applying for registered designs following the UK Supreme Court’s ruling that the Kiddee Case did not infringe a registered Community design (RCD) owned by the company that makes the Trunki case.
In March this year, Trunki maker Magmatic lost its lawsuit against Kiddee Case creator PMS International Group at the UK Supreme Court.
Lord Neuberger handed down a unanimous verdict which upheld a previous ruling by the English Court of Appeal.
The appeals court had overturned a 2014 ruling by the English High Court which sided with Magmatic.
In guidance published yesterday, June 1, the UK Intellectual Property Office (IPO) said those wishing to protect their design should “seek legal advice” before submitting an application.
The IPO added that “the Supreme Court’s judgment places much emphasis upon the distinction between those designs which are intended to protect shape alone, and those which are intended to protect both shape and other features.
“Although line drawings have been effectively used to signify shape-only, the law does not require that applicants state the ‘type’ of protection intended when submitting a UK registered design application,” the guidance added.
The guidance also advises applicants to “take care” when selecting representations for use in RCD applications and to “consider” how courts have responded to two different types of representation, including line and computer-aided design (CAD) drawings.
“Applicants should not interpret the Supreme Court’s judgment as discouragement against the general use of CAD representations when filing registered designs per se,” the guidance added.
The IPO added that it is keen for the application process to remain “accessible and flexible” for all.
It also advised applicants to use “simple line drawings” that reflect the court’s confirmation that “overall impression can be determined by the representations used”.
John Coldham, director at law firm Gowling WLG, told WIPR: “An important upshot of this guidance is that it should make clear that designs are not as straightforward as they first appear, and that obtaining legal advice is sensible if possible.
“It is important to remember that registered designs have the potential to be a very powerful tool, and given how cheap they are (and about to get cheaper in the UK following fee changes due in the autumn), every designer should consider them as an essential part of protecting their investment.”
