The UK Intellectual Property Office (UKIPO) has issued a rare
'Designs Practice Note' to provide guidance to applicants
in the light of the judicial comments made in the recent Supreme
Court decision in the 'Trunki' case.
Scope of protection
As part of the Trunki decision, the Supreme Court justices
commented that, in relation to a registered Community design (RCD),
the scope of protection conferred by the registered design had to
be construed from the drawings/photographs alone. This is because
EU design law does not allow the meaning of the
drawings/photographs (the 'representations' depicting the
design) to be altered by any written statement (eg, written
disclaimer or limitation) included on the representations or on the
application form filed with the RCD application.
This is probably a pragmatic restriction imposed by the European
Union Intellectual Property Office (EUIPO) in order to remove the
need to have to translate any written statement into all of the
official languages of the member states of the European Union.
Without the assistance of a written statement, there can be
ambiguity (as there was in the Trunki case) as to whether the
design that is protected by an RCD comprises just the 3D features
of shape and configuration, or the 3D features 'and
For example, the representations may show a 3D product which has
2D surface ornamentation in the form of a depicted tonal contrast
between different parts of the product, and it can be unclear
whether the 2D surface ornamentation is or is not to be construed
as a claimed design feature, in combination with the 3D shape and
If the representations show just a 3D shape with the product having
a clear or empty surface which is free of ornamentation, it can be
unclear whether the absence of ornamentation is being claimed as a
Use of line drawings
The comment from the Supreme Court was that line drawings offer
the best prospect for protecting the pure 3D shape of a product,
but the justices did not find an answer (in the context of an RCD
under EU design law) to whether line drawings, which inherently do
not show any 2D surface ornamentation, do or do not mean that the
absence of 2D surface ornamentation is a claimed feature of the
An answer may now be available nationally in the UK by the
parallel option of applying for a national UK registered design
under national UK design law and procedures.
UK registered designs
The national UK route has always been available in addition to
the EU route of an RCD application, but the national UK route has
been less popular since the EU route first became available in
The national UK route may now be heading for a renaissance in
the light of the new guidance provided by the UKIPO in its recent
Designs Practice Note (DPN) 1/16, and also because applicants may
wish to revert to securing registered design protection in the UK
under national UK law instead of under EU law, in the light of the
Brexit vote for the UK to leave the European Union in the next few
years (see the article opposite for our thoughts regarding design
rights and Brexit).
UKIPO DPN 1/16
The advice from the UKIPO in the recent Designs Practice Note is
brief and to the point, but it should be effective in ensuring that
a UK registered design is interpreted as covering only 3D shape,
and not some combination of 3D shape with the presence (or positive
absence) of 2D surface ornamentation.
The advice is that the UK registered design application should
be prepared and filed including a written statement that
"protection is sought for the shape and contours
This statement will appear on the Certificate of Registration
and will be used when interpreting the scope of design protection
conferred by the UK registered design.
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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