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UK IPO releases guidance on registering designs post-Trunki

22-06-2016

The UK’s Intellectual Property Office (IPO) published guidance this month on filing registered designs in the wake of the Supreme Court decision on the Trunki suitcase. That judgement had raised a number of important issues, some of which relate specifically to filing practices.

Does your design registration protect solely the shape of your product, or both its shape and ornamentation/surface decoration? That was the issue at the heart of the design infringement case brought by Magmatic (the company behind Trunki) against PMS International (maker of the Kiddee Case).

Ultimately, the ruling hinged on the question of ‘representation’ in the design registration: Magmatic had used Computer Assisted Design (CAD) software to illustrate the design in its application; however, the Supreme Court ruled ‘with some regret’ that those representations covered the shape, but not the ‘idea’ behind the designs. In other words, the fact that PMS International had also decorated its Kiddee Cases to look like small animals and insects was not an infringement of Magmatic’s registered designs.

What does this mean for registered designs going forward?
The IPO’s guidance emphasises the importance of choosing the type of ‘representation’ in design applications, and gives advice to designers on the different formats that can be used. Companies should also consider obtaining legal advice if at all possible – for both future and existing registrations, as the ruling could considerably reduce the scope of protection of their existing design rights.

For applicants seeking absolute assurance that different aspects of their design are protected, and/or for those who are uncertain as to how best represent their design, the IPO’s  guidance also mentions the usefulness of the ‘multiple application’ route. This provides applicants with a means of submitting different representations in one application, and is a more cost-effective approach than that of submitting multiple separate applications. (Find out more about registered designs)

Please don’t hesitate to contact us for further advice on protecting your design rights – or to review whether your existing registrations protect your product designs fully.