New guidance for registering designs in the United Kingdom
25th May 2017
The United Kingdom Intellectual Property Office (UKIPO) has issued new guidance on how to represent designs in registered design applications.
This guidance follows the judgement of the Supreme Court in the PMS International v Magmatic case, which concerned the design of the famous “Trunki” suitcases manufactured by Magmatic Limited. PMS International started selling their own product to compete with the Trunki suitcase and Magmatic issued legal proceedings against PMS International for infringement of its registered design. However, Magmatic found that their design registrations did not offer the breadth of protection that they had expected, primarily because they had chosen to include colour contrast in the representations of their design. In the absence of any explicit statement to the contrary, the Supreme Court concluded that the design registrations protected the shape in combination with the colour, rather than the shape alone, of the Trunki suitcase. Accordingly, although the shape of the PMS International product may have been very similar to the registered design, the differences in surface decoration were considered to distinguish the designs sufficiently for PMS International to avoid infringement.
The guidance from the UKIPO advises applicants who only want to protect the shape of their design to represent their design using simple line drawings without any colour or tonal differences and without any visible surface features or decoration, and possibly also to include a disclaimer or limitation in the application along the lines of, “protection is sought for the shape and contours alone”.
Stay of proceedings at UK courts - Coloplast A/S v Salts Healthcare Limited
24th February 2020
Although a stay of national proceedings is the ‘default’ position in the UK, the stay was refused in this instance because of the combination of an absolute right of appeal, a minimum of two years to appeal and the potential of the ping pong effect before the EPO.