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Case law: Graphic used when registering design is vital

Designers applying to register a Community Registered Design should take great care when deciding how the design is graphically represented in their applications, following a Supreme Court ruling. The ruling makes clear that the graphic determines the scope of the protection given by the registration.

Legal Alert

This update was published in Legal Alert - April 2016

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.

A company produced a ‘sit-upon’ suitcase for children. The design was protected as a Community Registered Design. The graphic in the registration comprised six 3D images of the product in monochrome, with greyscale shading and contrasts of tone.

The company alleged that a sit-upon suitcase produced by another business breached its Community Registered Design. At issue was whether the rival design ‘produced on the informed user a different overall impression’ from the company’s design.

The Supreme Court ruled that the rival’s design did produce a different overall impression, and therefore did not infringe the company’s design. The decision highlighted a number of important principles in relation to that test:

  • The court should not focus too much on specific points of similarity or difference when comparing designs in these circumstances. Instead it should carry out a global comparison
  • The colours on the rival product were relevant when looking at the overall impression it made compared to the design as registered. Colours were not present on the graphic in the company’s registration and the colours on the rival’s design therefore served to distinguish the rival design from that in the registration
  • The grey/black colour contrast on the graphic in the company’s registration had to be taken into account. This inferred that the design was only protected to the extent that the grey parts of the product in the graphic were a different colour from the black parts. The fact there were no such colour differences on the rival product was relevant when considering whether it produced the same overall impression as the company’s registered design

In summary, the court said the overall impression created by the company’s design was of a horned animal - an impression reinforced by the absence of colour in the graphic in the design’s registration.

However, that was not the rival design’s overall impression - which was significantly affected by its colour. In one incarnation its colours gave an overall impression of a ladybird, with the antennae as handles; and in another they gave an impression of a tiger, with ears as handles. In neither case was the overall impression that of a horned animal.

The court also said that the contrast between the parts of the product shaded black and those shaded grey in the graphic were relevant. The two shades inferred that the registration was intended to protect a design in which the body (grey) and the wheels, spokes, straps and strips (black) were different colours. They were not different colours in the rival design.

The decision clarifies the crucial importance of the way a design is graphically represented in the registration. In this case, the lack of colour and the presence of shading in the graphic in the company’s registration were - on the proper interpretation of that design – factors to take into account when comparing the overall impression created by each design

The court left open the issue of whether a lack of ornamentation could also be a factor to take into account.

Operative date

  • Now

Recommendations

  • Designers applying to register a design should ensure that the way it is graphically represented in their application gives it the required protection, as the graphic determines the scope of such protection

Case ref: PMS International Group Plc v Magmatic Limited [2016] UKSC 12

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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