Case law: Whether to register designs in black and white, greyscale or colour
Owners of designs should consider whether those designs should be registered in black and white, greyscale, or colour, as the protection given to the design can be different in each case, a recent ruling makes clear.
This update was published in Legal Alert - December 2015
Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.
The owner of a European Community registered design claimed another business's products infringed its design. European Community registration of a design protects it throughout the EU, including in the UK.
Each product had been decorated in bright but different colours. One of the business's arguments was that the owner's design was registered in black and white. It said the fact it was using distinctive colours on its design made it substantially different from the owner's registered design, therefore the registered design was not infringed.
The court disagreed: a comparison of designs for infringement purposes should be based on the registered design. As the registered design was not registered in colour, the comparison should ignore the colours used on each product, but focus on other elements of the design. The colours used on each were irrelevant.
This means that a European Community design registered in black and white can offer more protection to the owner, as it stops an infringer arguing that the colours used on its design differentiate it from the registered design.
The court gave useful guidance on the protection given where a European Community design is registered in greyscale, so there may be different shades of light and dark in the registration.
An important point for owners of UK registered designs is that it is not certain that the UK courts would come to the same conclusion. In an ongoing dispute, the owner of a UK registered design for luggage is alleging its design has been infringed by another business. The other business has successfully argued in court that there are contrasts between the shading used on the wheels and strap on its luggage which means its design is different. If that is right, then UK and EU law are inconsistent. The UK ruling has been appealed to the Supreme Court, but the appeal has not yet been considered.
- Owners of designs should consider whether those designs should be registered in either the UK or European Community, and whether in black and white, greyscale, or colour, as the protection given to the same design can be different in each case
Case ref: Wibit-Sports GmbH v Aquaparx Nederland BV: C/09/469900/HA ZA 14-839
Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.
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