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Is there life after Trunki (Part II)?

19 May 2016

This newsletter follows Part I published on 6 April 2016 which summarised the recent Supreme Court decision in the Trunki case PMS International Group Plc v Magmatic Limited [2016] UKSC 12.
 
In this second part, Darren Mitchell and Deborah Maxwell aim to reassure designers that there is life after Trunki and they provide some practical tips on how best to protect designs of consumer products in a post-Trunki landscape.
 
All is not lost
 
UK and EU registered designs can still play a key part in protecting a new product, not least because they:
 
  • - are inexpensive and easy to obtain;
  • - provide a monopoly right, so there is no need to show that a third party copied the protected design; and
  • - can provide up to 25 years of protection (subject to the payment of renewal fees every 5 years)  
 
In addition they have powerful deterrent effect and can help lead to settlement of a dispute long before the issuance of court proceedings.
 
However, the protection that they provide is limited to the appearance of an article and does not extend to the underlying idea.  (A patent is best for protecting that aspect.)  As a result, the scope of protection is determined solely by the nature of the representations that are submitted as part of a registered design application. Hence, now more than ever, very careful consideration should be given to the choice of representations included in a registered design application.
 
Top tips for choosing suitable representations
 
Following Trunki the consensus is that black and white line drawings of a product afford the broadest scope of protection and so should be used in preference to other forms of representation.
 
In an ideal world, where time and budget constraints are not an issue, such black and white line drawings should be supplemented by separate corresponding registered design applications which include greyscale renderings of the product, and also coloured images in each possible colourway.
 
So black and white line drawings are the best way to go, but what details should be included in the drawings?
 
Dr Martin Schlötelburg, the European Union Intellectual Property Office’s (EU IPO’s) registered Community design co-ordinator, provides a helpful starting point by indicating that “the selection of the means for representing a design is equivalent to the drafting of the claims in a patent”.
 
Our recommendation is that thought should be given to the important features of the product and their relative importance. A good starting point for identifying such important features would be those features that distinguish the product over similar existing products.
 
For example, returning to the Trunki case, a list of important features (in order of preference) might be:
 
  • - seat region to allow a child to ride on;
  • - animal character:
    •         horns
    •         nose and tail (as depicted by case locks)
  • - strap to allow carrying.
 
Thereafter, translating such features into a claimed hierarchy could give rise to the following suite of separate registered design applications:
 
Design 1 – outline only showing recessed portion forming seat







 

Design 2 – outline + horn detail

 







Design 3 – outline + nose and tail details (i.e. case locks)

 







Design 4 – outline + strap

 







Further consideration could be given, should costs allow, to filing further applications showing various combinations of the above features.
 
In addition, of course, an application in which the product is depicted in its entirety should also be included, i.e.
 
Design 5 – complete product


 






With regard to filing several registered design applications, both the UK Intellectual Property Office (UK IPO) and the EU IPO have fee regimes that provide significant discounts for the second, third and subsequent designs, if a number of applications are filed at the same time. Hence filing more than one registered design application can remain a cost-effective option.
 
Indeed the UK IPO intends to launch in October 2016 the option of protecting up to ten designs for a single official application fee of just £70.
 
What to do next…
 
If you have come up with the design of a new product get in touch with us and we will put you in contact with Darren, Deborah or another member of our Designs & Engineering Group in order to guide you on how best to protect the design.
 
To help us do this we suggest preparing a list of important features of the design and noting their relative significance, both commercially and in design terms.   Possible budgetary constraints should be identified as they can impact on strategy options too.
 
If possible, try to keep the design confidential as this can maximise design protection options, particularly when considering seeking protection beyond the shores of the UK and Europe. 

…and don’t forget
 
Keep good records of each new design, i.e.:
 
  • - what the design is (e.g. recorded in a drawing or by way of a model);
  • - who created it (and who he or she is employed by); and 
  • - when it was created.
 
This is because these details can, in a worst case, help to ensure that any unregistered design rights relating to the new design are available to be enforced against copycat designs.
 
Finally, if the product embodies a really great idea then keep the idea confidential and consider filing a patent application in order to seek protection for the underlying technical principle, e.g. a wheeled suitcase having formed in one side thereof a recessed portion defining in-use a seat for riding on the suitcase (…to return to the Trunki example mentioned above).

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