Last week the IPO released guidance on the use of representations when filing registered design applications following the Trunki decision. The highlights from this guidance are as follows:
- Applicants can choose what form of representation they deem most suitable for their design. However, line drawings are the preferred means for representing shape alone (see eg Proctor & Gamble v Reckitt Benckiser)
- A line drawing may also be an attempt to register both shape and minimalist ornamentation (eg Trunki).
- The Trunki decision should not discourage the general use of CAD representations. However, applicants should bear in mind that these may also represent "shape and more" such as shading and light reflection, which may be taken into account by the Court. Therefore when seeking shape only protection, applicants are advised to use simple line drawings, without any colour or tonal differences and without any visible surface features or decoration.
- A combination of representation formats cannot be used in the context of a single application. If, for example, a CAD drawing and simple line drawing are filed together in a single application, an objection will be raised.
- Where an applicant seeks to protect shape only, the use of written limitations/ disclaimers is recommended to define the protection as accurately as possible e.g. "protection is sought for the shape and contours alone".
- For applicants who are uncertain which way to represent their design, the "multiple application" route could be particularly useful. This allows applicants to submit different representations in one action and is more cost-effective than submitting multiple separate applications.
- Overall, the design protection is likely to be assessed by reference to features disclosed in the representation rather than by reference to the type or format used.
Comment
Overall, the use of line drawings seems to be encouraged when seeking to protect a shape in any design application. However, when preparing any representation of a design, it is important to keep in mind that, in practice, when seeking to enforce a registered design against an alleged infringing third party design, it is almost inevitable that the registered design will be scrutinised to determine whether it is novel. In other words, the alleged infringer will in most cases seek to invalidate the registered design on the grounds that it does not create a different overall impression from the prior art. This is because, at least in the UK and EU, a design is likely to be registered without any examination as to the novelty of the design against prior art. Therefore, registrations are, in this way, always vulnerable to attack. The risk of the design creating the same overall impression as any relevant prior art is more likely if the representation of the design is simple. Line drawings, by their very nature, are likely to be simple representations.
Casting our minds back to the High Court Trunki decision (to the part which was not overturned), the CAD representation of the design of the ride-on suitcase was held not to be invalid on the basis of the designers own disclosed prior art – an early prototype of the ride-on case called the "Rodeo":
Had the later registered design been represented with a line drawing rather than the more detailed CAD drawing, the risk of a successful invalidation of the registration would possibly have been greater. We suggest that when preparing a representation of your design for an application, you should always consider: i) what the precise novel aspects of your design are in view of any relevant prior art; and (ii) this together with the prior art with a professional and engage them to create the representation.