How To Prevent Your Design Protection Being Trunki-ated

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 their designs.

Aspects of the Trunki ruling suggest that designs can be protected as "shape only" and "shape and more". Procter & Gamble v Reckitt Benckiser [2007] 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 overall protection.

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 objection.

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 "shape-only" protection.

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...