The UK Intellectual Property Office (“UKIPO”) has published new guidance on registered design applications, which will see an increased emphasis placed upon dissimilarities between designs protecting product shape, as well as designs protecting other more specific features.
The guidance follows a Supreme Court decision in March between two children’s suitcase manufacturers, which ruled that a suitcase designed by Kiddee did not infringe the design rights of a similar suitcase designed by rival Trunki.
The Supreme Court ruled that the company behind the Kiddee suitcase, PMS International, could continue to produce its cases, despite its similarities to Trunki products, which Trunki claimed were “protected by computer generated registered design”.
To date, designers have chosen to only register the shape of their designs for protection, under the assumption that alternative visual features, such as decorations or smaller designs are likely be ignored in the event of an infringement claim.
However, under the new guidance, new emphasis will be placed 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,” the UKIPO has revealed.
In addition, the UKIPO noted that an application containing ‘basic line drawings’ are likely to be considered as ‘shape only’ designs.
As a result, applicants are advised to be both thorough and careful when deciding exactly how to represent their designs, in order to ensure that they provide an accurate representation of precisely what they are seeking to protect.
The UKIPO has called upon designers to obtain relevant intellectual property advice before submitting an application – which may otherwise be ambiguous or flawed.