The UK Intellectual Property Office (IPO) has today (1 June 2016) published guidance on filing UK registered designs following the Supreme Court's 9 March decision on the Trunki suitcase.
Our commentary on the Supreme Court's decision is available here.
The Supreme Court considered a number of issues in the Trunki judgment, not all of which were ruled upon. Instead, it was left for the registries, such as the UKIPO, to decide how to adapt filing practice. For example, the Supreme Court said:
"It is for an applicant to make clear what is included and what is excluded in a registered design, and he has wide freedom as to the means he uses. It is not the task of the court to advise the applicant how it is to be done. That it may be said is a matter of practice rather than law, and if further guidance is needed it can be sought from other sources, such as OHIM [now the EUIPO]."
The UKIPO's 1 June 2016 guidance accordingly provides advice for designers, on how to approach the issue of filing designs and providing representations of those designs. The guidance highlights the key areas in which filers of designs may face difficulty, and explains the advantages and disadvantages of different forms of representation. The guidance now includes an express recommendation that designers should consider obtaining legal advice if at all possible.
In a letter to the Institute of Trade Mark Attorneys (ITMA) and the Chartered Institute of Patent Attorneys (CIPA) in response to their joint submission on an earlier draft, the UKIPO said that:
"the continuing potential for courts to interpret the scope of protection in different ways, and depending upon the facts of each individual case, means that [the IPO] has stopped short of providing prescriptive/ definitive advice. However, [the IPO] has specifically recommended the use of line drawings in the context of shape-only claims."
Designs are much trickier than they may first appear but still have the potential to be a potent tool, if registered effectively, and this new Practice Note is likely to be of at least some assistance to practitioners and lay designers alike. At the end of the day it is for the courts to interpret the scope of designs, and the IPO has no say on how that is done. However, the IPO's new Practice Note does give some useful pointers to assist those filing designs in how to avoid some of the most common pitfalls.
ITMA and CIPA's Design and Copyright working groups made a joint submission on an earlier draft of the UKIPO's Designs Practice Note, which resulted in a number of changes. John Coldham, a director in Gowling WLG's Designs team, is a member of both working groups and assisted with the submission.
For more information on how to file designs and commercialise them, we have updated our detailed guide for designers. Please visit gowlingwlg.com/designsforlife for more information.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
