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
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
"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
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.
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
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.
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