The Supreme Court's decision in favour of PMS International in the long-running litigation regarding Magmatic's "Trunki" registered design has drawn significant attention to the use of representations in registered design applications.
Since the decision, the Intellectual Property Office has produced new statutory guidance to assist with registered design applications, highlighting the importance of ensuring that applications adequately define the intended protection.
Although it does not provide an exhaustive list of things to consider when making a registered design application, the guidance does confirm that it is important to consider:
- Whether you are seeking to protect the "shape alone" or "shape and other features" of your design;
- How representations used contribute to the "overall impression" of the design;
- How representations may be interpreted in light of recent case law;
- Whether disclaimers and/or limitations should accompany representations; and
- Whether a Multiple Design Application may be the best way to ensure that different aspects of the relevant design are protected.
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.