Statutory guidance

DPN 1/16: Guidance on use of representations when filing Registered Design applications

Published 1 June 2016

Introduction

1). The Supreme Court’s (SC) recent judgment in PMS International Limited v Magmatic Limited ^{[footnote 1]} has highlighted the extent to which protection conferred by a Registered Design can be determined by the representations used in the course of submitting an application.

2). By necessity, all Registered Design applications must include a ‘representation’ of the design intended for protection. Apart from a requirement that such representations be ‘suitable for publication’ (Rule 9(1) of The Registered Designs Rules 2006 refers), the applicant may choose to present a design using whichever illustration ‘format’ he or she considers to be the most effective and accurate means of representing the design. Guidance on the use of different representation formats is set out in the IPOs Illustrations Dos and Don’ts factsheet. Most representations are submitted in the form of pencil drawings, black line drawings, photographs, or computer-generated graphic images (such as those generated by Computer Assisted Design (CAD) software).

3). The degree of detail disclosed in a representation can vary depending on the type of representation format used. For example, a high-definition photograph of a three-dimensional object is likely to disclose design features which may not be discernible in a simple line drawing of the same object (a photograph is likely to disclose the visual effect of surface material, whereas a simple black-line drawing may not). That being so, applicants should be careful when selecting representations to ensure that they accurately reflect exactly what the design is intended to protect.

4). The following guidance takes into account the Supreme Court’s conclusions in PMS v Magmatic ^{[footnote 1]} , and seeks to help designers understand the possible consequences of selecting one representation format over another.

Shape-only versus ‘minimalist’ design

5). The SCs judgment places much emphasis upon the distinction between those designs which are intended to protect shape alone, and those which are intended to protect both shape and other features. Designers have frequently sought to protect the former on the basis that it is perceived to provide a wider scope of protection. Where an earlier design registered in respect of shape-only is used as the basis for an infringement action, the like-for-like comparison with a later design is more likely to focus on shape without consideration of any surface decoration, ornamentation, or other visual features present in the allegedly infringing design.

6). When seeking to protect shape alone, the applicant is at liberty to choose whichever form of representation he or she deems the most suitable means of capturing the shape in question. That notwithstanding, evidence indicates that line drawings are the preferred means for representing (and therefore capturing) shape alone. This reflects the Court’s judgment in Procter & Gamble Co v Reckitt Benckiser (UK) Ltd ^{[footnote 2]} where, in relation to the registration of black-line-on-white-background illustrations showing a plain undecorated ‘spray can’, it determined that:

(i) the registration was ‘evidently’ for shape

(ii) any like-for-like comparison with a later design should be limited to comparing the respective shapes only

(iii) graphics and other markings on the later design were ‘irrelevant’.

7). Although line drawings have been effectively used to signify shape-only, the law does not require that applicants state the ‘type’ of protection intended when submitting a UK Registered Design application. Where an application does not contain any additional written disclaimers or limitations (see paragraphs 13 and 14 below), protection is granted on the basis of what is shown and disclosed in the supplied representations.

8). Alongside the Court’s endorsement of shape-only design protection in cases such as Procter & Gamble, the SC in PMS v Magmatic ^{[footnote 1]} has also confirmed that absence of decoration can be a (positive) feature of a registered design. At paragraph 44 of its judgment, the Supreme Court stated that:

…simplicity or minimalism can notoriously be an aspect of a design, and it would be very curious if a design right registration system did not cater for it….

At paragraph 60, it goes on to confirm that:

…minimalism can self-evidently be an important aspect of a design just as intensive decoration can be….

9). These conclusions highlight an ongoing tension in the use of ‘simple’ representations (i.e. those showing outline shape without ornamentation) for the purposes of capturing a design. On the one hand, and in accordance with Procter & Gamble, an application containing basic line drawings may well be interpreted as an attempt to protect shape-only. At the same time, and in light of the SCs judgement in PMS v Magmatic ^{[footnote 1]}, it is also possible that a line drawing may be interpreted as an attempt to register both shape and ‘minimalist’ ornamentation (i.e. where plain undecorated surfaces are positively intended to be a feature of the design).

What does this mean in practice?

10). Following the SCs judgment, applicants should take care when selecting representations for use in UK Registered Design Applications, and it may be useful to consider how the Courts have responded to the following two different types of representation:

In PMS v Magmatic ^{[footnote 1]}, the Court assessed the greyscale representation shown on the left and concluded that its minimal levels of tonal differentiation were enough to result in the design being assessed as shape ‘and more’ (reference was made to the design being “not merely a specific shape, but a shape in two contrasting colours - one represented as grey and the other as black on the images”). In contrast, the Court in Procter & Gamble pointed to the line-drawing format shown on the right as being a suitable means for capturing shape-only.

11). Applicants should not interpret the SCs judgment in PMS ^{[footnote 1]} as discouragement against the general use of CAD representations when filing Registered Designs per se. The Registrar receives applications in a variety of representation formats including line drawings, photographs and CAD representations, and is keen to ensure that the application process remains accessible and flexible for all. However, when selecting representations, one should always bear in mind how the examples presented above were subject to different interpretations by the Court. Applicants may also benefit from seeking the advice of a qualified legal professional prior to submitting an application.

12). When using more detailed CAD-type representations, the visible presence of apparently-incidental features such as, for example, shading and light reflection, may still be taken into account by a Court or Tribunal, and may have the effect of limiting protection to shape ‘and more’. Therefore, when seeking to protect shape-only, applicants are advised to use simple line drawings, without any colour or tonal differences, and without any visible surface features or decoration.

13). Reflecting the Court’s confirmation in PMS ^{[footnote 1]} that overall impression can be determined by the representations used, applicants should also note that a combination of representation formats cannot be used in the context of a single application. Where a single application is received consisting of, for example, a simple outline drawing and a tonally-shaded CAD drawing (and where both representations are intended to represent the same design) an objection will be raised and the applicant given an opportunity to modify the application accordingly.

Use and effect of disclaimers and limitations

14). The UK’s digital application filing system and the equivalent (paper) application form both provide the applicant with an opportunity to disclaim or limit particular elements or aspects shown in the representation(s), thereby enabling further definition of the design intended for protection. A disclaimer or limitation can be presented in graphic form (for example, by circling those elements which are intended for protection, or by blurring-out those elements which are not), or in written form (by drafting and submitting a statement which explicitly states what is or is not intended for protection).

15). Where an applicant seeks to protect shape only, the Registrar recommends the use of written limitations/disclaimers in order to define the intended protection as explicitly and as accurately as possible. Therefore, in addition to following the advice provided at paragraph 12 above regarding the use of simple line drawings, an applicant may also wish to submit a written disclaimer or limitation such as, for example, ‘protection is sought for the shape and contours alone’. See further IPO guidance on disclaimers and limitations.

Multiple Design Applications

16). 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 (particularly where different representation types may disclose different elements), the ‘multiple application’ route can be particularly useful. It provides applicants with a simple means for submitting different representations in one action, and is more cost effective than submitting multiple separate applications. See IPO guidance on filing multiple Registered Design applications.

Summary

17). Applicants should be careful when selecting representations to ensure that they accurately reflect what the design is intended to protect. Designers should always give thought as to how their design might be exploited by others, and ask themselves whether the features disclosed in their chosen representations accurately convey what they are seeking to protect. In all cases, the protection conferred is likely to be assessed by reference to features disclosed in the representation(s) submitted, rather than by reference to the ‘type’ or ‘format’ of representation used. Prior to selecting and submitting their representations, applicants may also benefit from seeking the advice of a qualified legal professional.

Implementation

18). This guidance is effective from 1 June 2016.

1. Supreme Court judgment: PMS International Limited v Magmatic Limited [2016] UKSC 12 (PDF, 343 KB) ↩ ↩² ↩³ ↩⁴ ↩⁵ ↩⁶ ↩⁷

2. Court of Appeal judgment: Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936 ↩