Many in the UK designs community fear the Supreme Court’s decision could embolden copycats who may avoid registered design infringement in the UK by applying surface decoration on their products. The judgment was of course about registered Community designs (RCDs) but some practitioners say it may also affect how UK courts interpret UK registered designs.
ACID CEO Dids Macdonald said the judgment “will contribute to design law chaos allowing those who produce lookalikes a free rein”. In an article in 2014, Simmons & Simmons partner David Stone and William Corbett also made similar remarks concerning the Court of Appeal’s decision. “Copyists ought not to avoid infringement by applying different markings to a product,” they said. Patrick Wheeler, partner at Collyer Bristow, sees it that way too. “If someone who is producing a similar design correctly identifies the key elements and applies them differently then they may avoid infringement,” he said.
Registered designs still the best
|Eight nuggets from Neuberger|
|1. An appellate court is entitled to conclude that a trial judge overlooked a significant point, and therefore made a material error, if he or she failed to mention it in his or her judgment (paragraphs 24, 25 and 39).
2. To determine the scope of protection afforded by a registered design, there must be a proper interpretation of its illustration e.g. line drawings or CAD drawings (paragraph 30).
3. A judge has to conduct a global comparison of the designs at issue, on a “like-for-like basis”, taking into account all features such as colour contrasts or shading and surface decorations (paragraphs 39 and 53).
4. The images submitted by an applicant for registered design will be used to “exclusively identify the nature and extent of the monopoly which he is claiming”. Therefore the responsibility is on the applicant “to make clear what is included and what is excluded in a registered design” (paragraphs 31 and 32).
5. A registered design shown in monochrome image means it is not limited to particular colours. “[W]here a design is shown in colours, the colours are claimed, while a black and white drawing or photo covers all colours” (paragraphs 18 and 34).
6. If an applicant decides to submit CAD drawings of a design whose components have different colours, then the natural inference is that the different colours are intended (paragraph 52).
7. A registered design illustrated by simple line drawings is more likely to be afforded a wider scope of protection than other types. Nonetheless, each registered design must be interpreted in its own context (paragraph 46).
8. In principle, the absence of ornamentation can “be a feature of a registered design” – whether CAD drawings or line drawings - but such conclusion would depend on the proper interpretation of the images of the registration. Also the presence of ornamentation on an alleged infringing item is also a factor to be taken into account when deciding the question of infringement. Neuberger emphasised that his views on this particular issue must be treated as “strictly obiter” i.e. non-binding (paragraphs 44, 45 and 49).
The decision has reignited the debate on whether designers are better off relying on other IP rights - especially unregistered design rights (UDR) - than registered designs in the UK. A research paper by Estelle Derclaye revealed that where a registered design failed, UKUDR often succeeded. “It seems that it is more useful for a designer to sue on the basis of the UKUDR than on registered rights,” Derclaye concluded. Magmatic indeed succeeded in its claim on UKUDR infringement - which remains unchallenged. See box 2 for a review of other rights which may be available to designers.
Despite the scepticism, the majority of UK practitioners encourage creative people with original designs to see registered designs as the best IP right to protect the appearance of their products. Practitioners say some steps can be taken to secure a strong scope of protection for registered designs and make it difficult for infringers. Strategy will of course differ depending on the design and individual circumstances.
Get professional advice
The obvious first step is to obtain professional legal advice at the outset. Practitioners say the difficulty in Magmatic’s claim could be traced back to its RCD application. Those now concerned about their registrations or applications - especially if greyscale or monochrome CAD drawings were used - should seek advice.
Illustration is imperative
Design applicants must think carefully about how best to illustrate their designs. An applicant can choose any type of illustration - for example CAD drawings, black and white line drawings and so on – and what it shows, for example decorations. Whatever decision is made, the UK courts will hold the applicant to it. “Bear in mind the more you put in the more you’re limiting the scope of your design. Use professional drawings,” says Wheeler. Simon Clark, partner at Berwin Leighton Paisner, added: “What you leave out of a design registration can therefore be as important as what you add in.”
This is why practitioners strongly suggest line drawings. “Black and white line drawings of the product are strongly preferred since these will generally be interpreted as showing the external shape or contouring only, without limitation as to surface decoration,” say Alistair Holzhauer-Barrie, Heather Lane and Rowena Price of Gill Jennings & Every. Stone believes, based on the Court of Appeal’s analysis, line drawings “would have caught infringement”.
Regardless of the illustration chosen, be precise and balanced. “If you’re going to use line drawings in order to try to get a fairly wide scope of protection, you should at the same time think about the bits for which you’re not claiming exclusivity and highlight those so when a judge is conducting an assessment he doesn’t look at bits which don’t form parts of the elements that are considered to be exclusive,” said Wheeler. The Supreme Court endorsed UK case law which warns that if an applicant “chooses too general a level, his design may be invalidated by prior art. If he chooses too specific a level he may not be protected against similar designs”.
Get close to the actual product
The Court reiterated that a registered design only protects the appearance of a product and not an “idea” or “invention”. This was why it concluded PMS International did not copy or infringe the appearance of what is registered. It is therefore a reminder to designers to ensure the design, shape or other features, they are about to register closely matches the actual product.
“Just give a bit more thought to what it is you want to cover and what are the things that is likely to be of interest to potential customers – so far as you can tell,” says Wheeler. Having a filing strategy, as explained below, is a good idea.
Note some drafting conventions
Appropriate use of drafting conventions such as broken or dotted lines and description can later turn out to be very important. Practitioners say it is crucial to delineate aspects of the design claimed and excluded because it could help the judge interpreting the design.
Musker thinks the fact the Supreme Court said a registered design should be interpreted in its context makes a description, which is optional, very useful. “Magmatic argued that the fact that this is a CAD image and the design is for a children’s product formed part of the context of the drawings. So a description accompanying the design application can help interpret the image and form the context of that image,” he said. Still on description, Musker added: “It may also be used to disclaim certain parts of the design or state, for example: that the black colour of the wheels is only intended to show they are separate components; or help explain what the colours actually mean.”
Broken or dotted lines have a role to play, as Wheeler explained. “Think very carefully about what it is you’re asserting as the unusual and novel aspect of the design. If there are aspects of the designs which form part of the prior art, those can, in effect, be excluded using dotted lines,” he said. But there is a potential risk in using it - if not done properly. “[E]xtreme cropping is likely to result in designs which are either invalid or given such a narrow scope of protection as to be unenforceable against anything other than an exact copy,” argue Jana Bogatz, Manon Rieger-Jansen and Ewan Grist of Bird & Bird.
Another tip is to avoid unnecessary detail. “Unless it is a fundamental part of the appearance of your product, it is advisable to avoid colour and contrasting tones (or shading) in the images for such an application,” say Holzhauer-Barrie, Lane and Price.
Establish a filing strategy
|Other rights vs registered designsr|
|UKUDR: UDR is seen as a fall-back option for designers, as demonstrated in this case. It is automatic and costs nothing. “The first step will be to see whether you can use it,” says Musker. He added: “Potentially, unregistered design right might give you a better scope of protection as you can choose what parts you sue on at the time you bring the enforcement action.” But it has its limits. “The duration, for the purposes of protection and enforcement, is much less than registered designs,” he says|
In 2014 the UK government introduced various changes to design law. Among other things, the scope of protection for UKUDR has been narrowed, but it is now a criminal offence to intentionally copy a registered design in the UK
Copyright: Copyright may well be considered more attractive than UDR when the UK government brings in its proposed amendments to copyright law (for example to extend full copyright protection to certain artistic works) following the CJEU’s decision in Flos. Nonetheless, only a limited number of designs can attract copyright protection in the UK due to the high threshold set by UK courts. Musker said: “Many people think they can use copyright, but at present, since the Lucasfilm case, it is fairly clear that copyright won’t assist for the vast majority of product shape designs.
Trade marks/passing off: Trade marks have also been suggested, but there are hurdles to overcome. As Ruth Burstall and Iona Silverman of Baker & McKenzie explained: “[T]he requirement that a trade mark is distinctive and that it indicates the trade origin of a product is more difficult to demonstrate in relation to the shape of a product.” The same view is shared by Musker. “The CJEU decision in Hauck case makes it clear that you can’t get a trade mark for most product shape designs either,” he said.
A passing off claim is another possibility, though, again, very difficult to prove. “Could they [Magmatic] have made an argument that consumers recognise the get-up or appearance of their products to such an extent that they would be deceived on seeing the defendant’s products and assume they too came from Trunki? Any evidence of actual confusion in the market place would certainly have supported such a claim,” argue Alistair Holzhauer-Barrie, Heather Lane and Rowena Price of Gill Jennings & Every
Patents: Some say a patent could have been an option for Magmatic. The company says its products are protected by various IP rights including patents. There are indeed stringent requirements and substantive examination to overcome to obtain protection. Musker, in an article, said Magmatic’s earlier design, Rodeo, “ruled out getting patent protection” for the disputed design.
Overall score: All the comments we have seen and received hand it to registered designs. Practitioners say they are usually easier to enforce in the civil courts for things like product shape, and, unlike UDR, all you have to do is show your certificate. Furthermore, they are relatively easy – considering the limited examination involved - and cheap to obtain. See our recent article on fee reductions by the UK government. “In my view it is still the best form of protection for a long term, important design. The registered design system also gives you easy access to the customs enforcement and criminal enforcement system,” Musker concluded.
Neuberger quoted Martin Schlötelburg of the EUIPO likening the illustration of designs in applications to drafting patent claims. Patent and trade mark attorney firm London IP provided a good example of this. “Thus in the same way that we structure patent claims to provide as broad protection as possible in claim 1 and slightly narrower protection in each dependent claim it may be worth filing a bald black and white line drawing for broad design protection and subsequent sets of more detailed drawings until eventually a life-like representation is reached,” the firm said in its case note.
As Bogatz, Rieger-Jansen and Grist explained: “The aim is to create a thicket of registrations capable of catching third party designs which copy the underlying central design concept but are perhaps missing one or more less important features.”
File various designs
Filing simultaneous multiple applications is the key strategy suggested. This can be to protect certain aspects of the design and/or entire design of the product. “It is a wise and cost-effective approach do so, and the Supreme Court gave this their blessing [see paragraph 32 of the judgment],” says Musker.
How can a designer approach this? “First, you need to pinpoint which parts of the design are striking and which parts are conventional, so as to give you an idea of how many applications to file and in what format,” Musker said. Stone explained further: “The designer could then file for the whole suitcase, the suitcase without wheels, the suitcase without strap; as well as the various animal versions of it.” According to Musker, “the reason for this is because wheels can come in different shapes and colours”.
Wheeler added: “If you feel decorations might be important in the future then maybe some with decorations, and others without.” Musker believes the Court indirectly endorsed this strategy: “The Court has said you can protect just the shape of the product, or just the ornamentation, or several design features in combination.”
Be careful with disclosure
Finally, designers must think carefully on how and when to disclose prototypes of their designs. Practitioners are of the view that a design prototype should not be disclosed before its protection strategy has been thought through. Musker says doing so risks “limiting scope of protection”. In this case, the courts agreed that the earlier version of Magmatic’s design, Rodeo, had an impact on its RCD but still gave it a “relatively broad scope of protection”.