Following the Trunki decision, as we covered in our earlier blog post, the Intellectual Property Office (IPO) has released new guidance about the use of representations when filing registered design applications. Here are the key things you need to know…
Before you make an application
It’s up to you, as the applicant, to use your discretion when choosing an appropriate representation in terms of which will be accurate, as well as the most effective. Most representations under the Registered Design Rules 2006 are a combination of photographs of Computer Aided Designs (CAD) or pencil drawings.
The key points identified in the guide are:
- The applicant can now decide on the most appropriate representation of their design
- Proctor & Gamble v Reckitt Benckiser  confirms it’s still advisable to use line drawings when representing shape alone - they’re the preferred representation for shape
- The Court may consider a line drawing to register both shape and minimalist ornamentation
- The protection should be defined as clearly as possible where an application is made, to protect the shape only. This can include written limitations and disclaimers
- CAD drawings shouldn’t be disregarded as a useful form of representations and their use shouldn’t be discouraged. However, applicants should consider that shading and light might represent shape and other elements, such as surface decoration. As such, applicants should consider, when looking to only protect the shape, using simple line drawings without the inclusion of any tone, colour, decoration or indication as to any other visible surface features.
- Where applicants are making a single application, no combination of formats should be used. If a combination of formats are filed in a single application, there will be an objection raised.
- Where applicants are uncertain of which way to represent their design, they may use the multiple application route. This, unlike a single application, allows them to submit different representations of the design. Plus, it’s more cost-effective than submitting numerous single applications.
- Rather than by reference to the type or format used, the design protection is likely to be assessed by reference to features disclosed in the representation.
If you’re an applicant, you should consider the above points when deciding on which method you’re going to use for representations, and what the Court will review when a registered design and an alleged infringing product are compared.
You should also bear in mind that designs are likely to be scrutinised to determine whether they’re novel. This is due to designs not having to show they’re novel when they’re being registered. In this respect, designs, especially where represented by pencil drawings, are more likely to be at risk of creating the same impression. Had the later registered design in the Trunki case been a pencil drawing rather than CAD, there would potentially have been a greater risk of a successful invalidation of the registration.
If you’d like advice about filing a registered design application, please contact us on 01604 828 282 or send us a message via our online service.