Should designers “pack up and go home”?
Following the decision of the Supreme Court on 9 March 2016 Magmatic, of Trunki ride-on suitcases fame, would be forgiven for thinking that a registered design is not worth the paper it is written on having lost their battle with rival Kiddee (PMS International Group Plc) over the design of Kiddee’s competing product.
In this case, which has lasted several years, Magmatic argued that Kiddee suitcases infringed its registered design rights. Both Trunki and Kiddee ride-on cases are decorated to look like animals.
Simply comparing cases from respective companies one can see similarities in design and overall concept - so why were Kiddee found not to have infringed Trunki’s designs by no less than a unanimous decision of five supreme court judges? Even the head of the court, Lord Neuberger, expressed “some regret” as the conception of the Trunki “seems to have been both original and clever”. The judgement also said “[U]nfortunately for Magmatic, however, this appeal is not concerned with an idea or an invention, but with a design.
First thing to consider, of course, is that the test for registered design infringement is not based on a comparison of one article with another but a comparison of the alleged infringing article with the registered design. It is therefore important that the registered design portfolio covers the different designs that are to be sold. Although relatively cheap, having a separate Community Registered Design for every design variant one could conceive of is likely to prove prohibitively expensive. The UK Designs Registry is soon to make registered designs extremely cheap mitigating budget issues, but of course such design registrations only cover the UK. However, it may not be necessary to have a registered design for every graphic design variation applied to an article if the shape and configuration of an article is a consistent aspect of a design for several different graphic designs.
In reversing the earlier High Court decision finding infringement, the Supreme Court found that the first instance judge had wrongly based his assessment only on the consideration of shape, and had excluded other aspects of the design as registered, such as surface decoration.
Using simple line drawings with no shading avoids one of the problems with Magmatic’s case. Simply using CAD drawings may not be good enough, particularly if they have shading. Avoiding shading includes avoiding shading to show illumination or shadow such as is common with US originating design patents. Light or very little shading may not prejudice scope of the registered design protection but heavy or extensive shading may be construed as a part or the protected design and limit the scope of protection. Further, the use of colour(s) in the design drawings should also be avoided, as the colour(s) will form part of the registered design. A black and white representation, on the other hand, covers all colours. A simple line drawing showing only the contours of the design should achieve the broadest scope of protection.
If a registered design application is to claim priority from a design which includes shading not intended to be part of the protected design, mitigating measures may be taken. Although not perfect, the following suggestions seek to optimise what protection may be afforded by the priority claiming application.
A first community design application may be filed with a set of representations identical to those in the priority application and a second community design application may also be filed with a set of representations having the shading removed to provide a better scope of protection. The second design application may have a diluted priority claim compared to the first application due to the removal of shading, but that would not be an issue if the second application was filed within one year of the design covered by the applications being made public as the grace period would apply. Alternatively, the first and second applications above could be combined in a single multiple-design application, with the first design comprising representations identical to those of the priority application and the second design comprising representations with the shading removed.
The foregoing is a “sticking plaster” solution and in preference to that it would be better if priority applications did not include shading. However, some jurisdictions may require shading of the type discussed or other detail to be included in a design application. In such jurisdictions, a strategy of filing on the same day respective applications, one with shading etc to comply with local law or practice and one without, may be adopted. For jurisdictions such as the USPTO where a design patent application may be filed comprising plural designs, having one set of representations with shading and one without seems prudent. Such applications would provide clear priority basis for a community registered design having no shading.
In relation to registered designs in the UK, recent proposals by the UK Government to reduce filing and renewal fees for national UK registered designs should be borne in mind. If these proposals are effected, the fees for a multiple design application in the UK will drop markedly. Therefore, it will be considerably cheaper for applicants for UK registered designs to file an application for multiple designs. With this in mind, applicants may wish to consider registering not only the whole design, but also, perhaps, parts of the design so as to focus protection just on that one part/aspect of the design. As an example, the following strategy may be adopted:
• Design 1 of multiple application – comprising representations illustrating seven views of the design (e.g. perspective view, top-plan view, bottom-plan view, left-side view, right-side view, front view, and back view);
• Design 2 of multiple application – comprising a representation illustrating a perspective view of the design;
• Design 3 of multiple application – comprising a representation illustrating a top-plan view of the design;
• Design 4 of multiple application – comprising a representation illustrating a bottom-plan view of the design;
• Design 5 of multiple application – comprising a representation illustrating a left-side view of the design;
• Design 6 of multiple application – comprising a representation illustrating a right-side view of the design;
• Design 7 of multiple application – comprising a representation illustrating a front view of the design; and
• Design 8 of multiple application – comprising a representation illustrating a back view of the design.
Of course, the above strategy could be adopted for European community design applications, but the fees payable would be much higher.
© 2016 WP Thompson all rights reserved. The authors, Dr Julian M Potter and Alistair McKinnon, assert their moral rights to be identified as the authors. If you would like more information please contact your usual WP Thompson advisor or the authors.