The UK Intellectual Property Office (UKIPO) has published new guidance on registered design applications, which will see increased emphasis placed upon dissimilarities between designs protecting product shape, as well as designs protecting other more specific features.
The news comes following 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 one 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 a Trunki founder claimed were “protected by computer generated registered design”.
Up until now, 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 will likely be ignored in the event of an infringement claim.
However, under the new guidance, new emphasis will be placed upon “the distinction between designs protecting shape alone and those protecting other features as well as the shape,” the UKIPO has revealed.
One complication arises from the fact that ‘basic line drawings’ are likely to be considered as ‘shape only’ designs, the UKIPO has noted.
Due to this, applicants are advised to be both thorough and careful when deciding exactly how to represent their designs, in order to ensure that they give an accurate representation of precisely what they are seeking to protect.
The UKIPO has called upon designers to seek the relevant intellectual property advice before submitting an application – which may otherwise be ambiguous or flawed.