Intellectual Property
But what about the Trunki design , which was not a simple line drawing , but rather rendered CAD drawings – three dimensional images which show the suitcase from different perspectives and show the effect of light upon its surfaces ? The Court agreed with the Court of Appeal ' s three criticisms of the trial judge ' s approach :
• The judge failed to give proper weight to the overall impression of the registered design as a " horned animal ", which was significantly different from the impression made by the defendant ' s product , which was either an insect with antennae or an animal with ears . Whilst the judge should not be expected to refer to all the points which influenced his decision , an important feature was not mentioned , whereas other less significant points were .
• The judge failed to take into account the effect of the lack of ornamentation on the surface of the registration . The Court said that it should be taken into account ; it did not detract from the impression of a horned animal .
• The judge ignored the colour contrast in the registration between the body and the wheels . This was chosen by the designer , striking , and should have been taken into account .
Registered designs protect lines , contours , colours , shape and texture
Finally , the Supreme Court rejected the suggestion from Trunki and the Comptroller of Patents ( intervening ) that there was a point that should be referred to the CJEU , particularly on whether ( and how ) the lack of ornamentation should be a feature in its own right .
With a registered design , none of this is required .
The key lesson for designers is this : take care when filing - any detail included in the design could be used to restrict its scope , so registrations should be as simple as possible whilst bearing prior designs in mind .
But how do you make it clear your design is just for the shape and nothing else ? The Court did not offer any practical guidance ( as it is not its role to do so ) - the design registries should do so . In the meantime , it is likely that a vast number of existing designs on the register will be narrower than those filing them originally envisaged , particularly those that were filed as photographs or detailed CAD drawings , which will make life easier for copycats .
The Supreme Court ' s decision in more detail Registered designs protect lines , contours , colours , shape , texture and / or materials of the product itself and / or its ornamentation . " And / or " means that a registered design can protect just one of those features , eg . shape alone . But how do you make that clear , when verbal disclaimers are not permitted .
Earlier case law appeared contradictory – in Proctor & Gamble v Reckitt Benckiser , the claimant argued that , in light of the registration , only product shapes should be compared , and the Court of Appeal agreed . The registered design ( for an air freshener aerosol ) was a series of line drawings in monochrome , and so it was taken to be shape only . By contrast , the Court of Appeal found in Samsung v Apple , a case about an early design of iPad , that the design was not for shape alone - although the design was a monochrome line drawing , it was a feature that it had an absence of other features .
The Court of Appeal found in Samsung v Apple , a case about an early design of iPad , that the design was not for shape alone - although the design was a monochrome line drawing , it was a feature that it had an absence of other features .
38 SUMMER 2016