Notice on the use of representations in Registered Design applications9th July 2016
The UK Intellectual Property Office has issued a design practice notice that offers guidance on the use of representations in Registered Design applications. The notice outlines the practical implications of the Supreme Court’s recent judgment in PMS International Limited v Magmatic Limited.
Since February 2013, Magmatic, who manufactures and sells ‘’Trunki’’ suitcases, has been engaged in legal proceedings against PMS for infringement of its Community Registered Design (CRD). The proceedings were issued after PMS began selling a suitcase which has a similar shape to the ‘’Trunki’’.
The Supreme Court ruled against Magmatic partially on the basis that the representation in its CRD displayed colour contrast, which limited the protection of the design to the shape and tonal differences of the suitcase, rather than the shape alone.
The practice notice takes this decision into consideration and highlights the extent to which representations in applications must be crafted with care and caution. Applicants must understand how their representations will be interpreted and the protection that will be consequently conferred.
In Magmatic’s case, their representations were interpreted as registrations of both shape and ‘’minimalist’’ ornamentation, where a shape-only interpretation would have conferred a higher degree of protection for their design.
Applicants may find it challenging to assess whether their representations accurately reflect precisely what their design is anticipated to protect, in which case they should refer to the practice notice issued by the IPO, and may further benefit from legal advice.