1. What

This DPN revises and clarifies IPO practice for the examination of products consisting of multiple components.

2. Why?

We regularly receive design applications seeking protection for the appearance of a product which consists of multiple components. We have also received requests for guidance on what is, and is not, considered to be acceptable in a single application.

3. Previous published practice

Our previous practice published in paragraphs 2.14, 2.15 and 2.16 of the Registered Designs Examination Practice Guide headed “Products consisting of multiple components” is rescinded and replaced by the guidance below at paragraph 2.14 – 2.16.

4. Products consisting of multiple components

When considering the guidance below, applicants are reminded that Section 1(2) of the Registered Designs Act 1949 (RDA) defines a design as:

“… the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or material of the product or its ornamentation.”

When examining applications for registered designs therefore, the examiner will consider whether the application seeks protection for the appearance of a single, unitary product.

2.14

An application for a registered design protects the appearance of a product. Whilst section 1(2) RDA refers to a product, or a part of a product, in the singular, that does not preclude the registration of a product which consists of multiple components. A product that consists of multiple components can be considered as a product in its own right, and can be represented in a single design application, if the components together are considered to be a unitary product. This approach has been confirmed in the Appointed Person (AP) decision number BL O/374/21. However, in paragraphs 21 and 22 of that decision, the AP rejected the submission that any two, or more, unrelated items can be protected as part of a single design application. However, the AP went on to accept that a product need not always consist of just one physical object, for example, a canteen of cutlery may contain more than one item but still be considered a single design.

Factors which may be taken into consideration when assessing if a number of articles make up a single unitary product may be where the appearance or function are complementary to each other and they are, in normal circumstances, sold together as one single product. If the articles also stay together for the normal life of the product, this would be a further indicator that they comprise a single unitary product. Examples would include a chess set consisting of a board, pieces and a box, or a canteen of cutlery consisting of various knives, forks and spoons, which are specifically adapted to store and display its contents. However, where an element is removed and thrown away after use, for example, disposable gloves within its packaging or a food item removed from a box, in such cases an objection may be raised.

Equally, a bag which has both handles and a detachable body strap is considered a unitary product.

2.15

However, an objection will be raised against applications which contain multiple elements that are not considered to be a unitary product, for example, a physical product and the box in which it is contained at a point of sale. In decision BL O/374/21, the AP gave an example of when certain articles shown together would not be considered as a single product:

23. By contrast, eggs are very commonly sold in boxes of half a dozen. In my view it does not follow that 6 eggs, or an egg box together with the 6 eggs it contains, are to be regarded as a single product. This is simply a convenient number of eggs to handle, distribute and buy, and the eggs will be consumed one by one as needed and the box will then be thrown away.

The example given is clear that a product (albeit that eggs are a natural product and would not be accepted for registration under section 1(2) of the Act) and its packaging would not be considered a unitary product. This is consistent with the decision set out in BL O/260/18 in which the inter partes hearing officer stated, at paragraph 23:

“….no one would say that the cardboard box in which (say) a keyboard is sold is part of the product. It is just packaging for the product inside and will usually be thrown away (or hopefully recycled) once the keyboard has been unpacked. In these circumstances, the packaging and the keyboard cannot be regarded as a ‘unitary object’ (to borrow a term from the case law of the General Court in Ball Beverage Packaging Europe Ltd v EUIPO)”.

Therefore, the examples shown below would face an objection under section 1(2) RDA.

A further example, which would not be considered acceptable, would be a gift set consisting of different toiletries, for example a hand lotion, a perfume bottle and soap sold together in a basket, or gift box.

2.16

Amongst the twelve views permitted in respect of applications filed electronically (there is no limit to the number of representations allowed via the filing of a paper form), applicants must submit at least one view showing the set of articles in its entirety, as shown in the acceptable examples above, of the canteen of cutlery and chess set.

5. Overcoming an objection

Where an application contains more than one product within a single application, such as the toy and its box, or the cutlery set shown in its packaging, the applicant will be given the opportunity to divide the application under section 3B of the RDA, remove representations or alternatively to limit the application by adding a disclaimer, for example “the product is shown in the packaging for illustration purposes only and forms no part of the design”.

6. Timing

Given that the context of this DPN is merely of a clarificatory nature, it applies immediately.