Following the UK Supreme Court’s decision earlier this year in PMS v Magmatic (the Trunki case), the Intellectual Property Office (IPO) has issued a guidance note that gives advice on how best to apply for UK registered designs, taking into account the Supreme Court’s judgement.
One of the reasons that the Kiddee Case was found not to infringe Trunki’s registered design was that the representation in the registered design was a grayscale shaded CAD image that showed colour contrast between different parts of the case (including the wheels). This colour contrast was judged to be critical to the “overall impression” created by the design, and this feature of colour contrasting wheels was not shared by the alleged infringing Kiddee Cases.
In addition, although not crucial to the Supreme Court’s judgement, it was indicated that the lack of decoration in the plain CAD image in Trunki’s registered design may also be limiting, and thus another point of difference to the animal pattern on the side of the Kiddee Cases.
Thus, owing to the nature of the CAD image provided by Trunki in their registered design, the design was found by the Supreme Court to be limited to features shown (e.g. the colour contrast) that were more than simply the overall shape of the case (the broader scope of which would have been more likely to have found to been infringed by the Kiddee Case).
The IPO’s guidance note indicates that to best protect the overall shape of a product in a UK registered design application, the representation should be in black and white line drawings. In addition, the IPO recommends including some explanatory text in the UK design application indicating that the protection being sought is for the shape of the product alone.
Previously, explanatory text has not been taken into account when assessing the scope of a registered design, and (in contrast to UK design applications) in EU registered designs any explanatory text does not form part of the registered design (and so it does not carry any weight). This guidance thus departs from previous practice and so there will be little case law to support this new advice. It therefore remains to be seen how a court will interpret the scope of a design that includes such explanatory text.
“Where an applicant seeks to protect shape only, the Registrar recommends the use of written limitations/disclaimers in order to define the intended protection as explicitly and as accurately as possible.”
https://www.gov.uk/government/publications/designs-practice-notice-dpn-116/dpn-116-guidance-on-use-of-representations-when-filing-registered-design-applications
