Scope of protection for UK designs after Trunki

Scope of protection

As part of the Trunki decision, the Supreme Court justices commented that, in relation to a registered Community design (RCD), the scope of protection conferred by the registered design had to be construed from the drawings/photographs alone. This is because EU design law does not allow the meaning of the drawings/photographs (the 'representations' depicting the design) to be altered by any written statement (eg, written disclaimer or limitation) included on the representations or on the application form filed with the RCD application.

This is probably a pragmatic restriction imposed by the European Union Intellectual Property Office (EUIPO) in order to remove the need to have to translate any written statement into all of the official languages of the member states of the European Union.

Without the assistance of a written statement, there can be ambiguity (as there was in the Trunki case) as to whether the design that is protected by an RCD comprises just the 3D features of shape and configuration, or the 3D features 'and more'.

For example, the representations may show a 3D product which has 2D surface ornamentation in the form of a depicted tonal contrast between different parts of the product, and it can be unclear whether the 2D surface ornamentation is or is not to be construed as a claimed design feature, in combination with the 3D shape and configuration.
If the representations show just a 3D shape with the product having a clear or empty surface which is free of ornamentation, it can be unclear whether the absence of ornamentation is being claimed as a design feature.

Use of line drawings

The comment from the Supreme Court was that line drawings offer the best prospect for protecting the pure 3D shape of a product, but the justices did not find an answer (in the context of an RCD under EU design law) to whether line drawings, which inherently do not show any 2D surface ornamentation, do or do not mean that the absence of 2D surface ornamentation is a claimed feature of the registered design.

An answer may now be available nationally in the UK by the parallel option of applying for a national UK registered design under national UK design law and procedures.

UK registered designs

The national UK route has always been available in addition to the EU route of an RCD application, but the national UK route has been less popular since the EU route first became available in 2003.

The national UK route may now be heading for a renaissance in the light of the new guidance provided by the UKIPO in its recent Designs Practice Note (DPN) 1/16, and also because applicants may wish to revert to securing registered design protection in the UK under national UK law instead of under EU law, in the light of the Brexit vote for the UK to leave the European Union in the next few years (see the article opposite for our thoughts regarding design rights and Brexit).

UKIPO DPN 1/16

The advice from the UKIPO in the recent Designs Practice Note is brief and to the point, but it should be effective in ensuring that a UK registered design is interpreted as covering only 3D shape, and not some combination of 3D shape with the presence (or positive absence) of 2D surface ornamentation.

The advice is that the UK registered design application should be prepared and filed including a written statement that "protection is sought for the shape and contours alone".

This statement will appear on the Certificate of Registration and will be used when interpreting the scope of design protection conferred by the UK registered design.

Further design protection and strategy advice

For further information, or to discuss your design strategy with a member of our design team, please do get in touch or visit our website design services page: www.dyoung.com/designs.