Following the Supreme Court's ruling in PMS
International v Magmatic (discussed in
our previous article) (otherwise known as "Trunki"),
the UK IPO has issued a designs practice notice which highlights
useful steps applicants can take to maximise the protection of
Aspects of the Trunki ruling suggest that designs can be
protected as "shape only" and "shape and more".
Procter & Gamble v Reckitt Benckiser  FSR13 was
cited as an example of a case where line drawings were successful
in protecting a "shape only" design. In contrast, the
computer-aided design (CAD) representations that were the subject
of the Trunki case were considered by the Supreme Court to protect
"shape and more". This was a result of the tonal
differences which the CAD representation introduced.
The UK IPO goes on to make the point that when considering the
best way to represent a design, it should be remembered that
representations consisting of photographs, CAD drawings and the
like may well include more detail than would a simple line drawing.
This additional detail, even if inadvertently included, could be
taken into account by a court and therefore result in narrower
If protection for "shape only" is required, then the
UK IPO recommends filing simple line drawings, devoid of any colour
or tonal detail and without visible surface decoration. For maximum
protection, it may be best to file a multiple design application
comprising a set of line drawings plus an additional set of CAD
drawings. The UK IPO makes it clear that a single design must not
comprise a mixture of both, since this would give rise to
non-conformity between the views, and may result in an
The above advice seems relatively straight-forward. However, a
further aspect of the Trunki decision was the suggestion that the
absence of surface decoration could be considered to positively
indicate a "minimalist" design. In other words, where
simple representations such as line drawings are used, this may
result in a Court interpreting the absence of surface decoration as
an intended feature, rather than as an attempt at
In order for applicants to steer their design boat between
Scylla and Charybdis resulting from this apparent contradiction,
the UK IPO suggests that applicants make use of disclaimers or
limitations, in order to obtain broader protection. These may be
presented in graphic form, by blurring out parts of a design for
which protection is not sought, and which are not intended to limit
the scope of protection, or (perhaps more usefully) in text form.
As an example, the phrase "protection is sought for the shape
and contours alone" may be added to each of the
representations and/or included in section 8 of Form DF2A, in order
to clarify the intended scope of the design. Of course, care must
be taken when phrasing a disclaimer so that it is pitched at an
Unlike under European Community Design law, disclaimers and
limitations used in UK design registrations are
taken into account by a court or tribunal when determining the
scope of the design. They are therefore an effective way of
avoiding any confusion over what the representations are intended
It is apparent that the long-anticipated Trunki ruling has
identified potential pitfalls in design applications. This recent
practice notice is therefore a welcome reminder that applicants can
take steps to clearly indicate the way in which they wish to
protect their designs, by careful consideration of image type, and
by the use of disclaimers and multiple design applications. With
official fees now set at just £60 for a single design and an
extra £40 for each additional design, UK design protection is
still an extremely useful and cost-effective form of intellectual
property protection. Also, whilst EU-wide Community Designs have
their own advantages, the more flexible UK approach to disclaimers
(in particular, verbal ones) means that UK design protection should
be considered in parallel with EU design
protection when considering how to maximise protection.
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
The UK government has not yet invoked Article 50 of the Treaty on European Union (this is likely to happen by the end of March), and the UK's actual exit from the European Union is at least two years away.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).