Practical tips for UK and EU design registrations in view of the UK Trunki decision

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In the wake of the UK Supreme Court's Trunki decision, designers may now be questioning the value of registered designs to protect their products in the UK.  However, during a panel discussion at the ITMA designs seminar on 27 April 2016, Mark Vanhegan QC and Michael Hicks (who represented the parties in the case), and Nathan Abraham of the IPO pointed out that design registration still represents good value for money and gave the audience some practical tips on how to secure valid protection.

Advantages of design registration:

•Relatively cheap

•2D designs can be protected 

•Provides an absolute monopoly (there is no need to prove copying)

•There is a grace period, which could be useful if there has been accidental disclosure before registering

One point to note is that many registered design cases are settled before ever making it to court so we do not hear about them.  This demonstrates that registered designs can still be useful in providing protection.

Practical Tips:

Different types of representation provide different scopes of protection and therefore cover different designs.  Each design can include several representations, but these should therefore all be of the same type.  We would recommend, for each product, filing at least three sets of representation: line drawings (to provide broad protection for the overall shape), black and white photos or CAD designs (not limited to particular colours, but protects different tones to the product), and full colour photographs (to protect the specific product itself).  By filing a series of different representations with a range of level of detail, one would hope that at least one would be both valid and infringed if tested.  An example of what might have helped in the Trunki case can be found below:

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Katherine is a British and European Patent Attorney. She obtained a BSc in Molecular Biology with French from the University of Manchester. Katherine works on, amongst other things, the patenting of nucleic acid arrays and their use in hybridisation assays, methods of oligonucleotide synthesis, diagnostic tests and treatments for several important diseases, and medical devices.