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Case law: Beware using CAD images containing colour when registering a design as this can limit protection of registration

Businesses or individuals registering a design in the EU or in the UK should note that submitting images in colour will limit the scope of protection given by the registration to products in that colour, and should therefore avoid using Computer Assisted Design (CAD) software that automatically renders images in a particular colour.

January 2020

This update was published in Legal Alert - January 2020

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 designing baby products registered an EU design for a baby bath. The application contained eight different views of the bath. The relevant images were produced using CAD software and were blue in colour.

The design was later upgraded and the fresh design also registered as an EU design - but this time the relevant images were line drawings with no colour.

The company took legal action in the Intellectual Property Enterprise Court (part of the UK High Court) against a competitor for infringement of both its first and second registered designs.

One issue that arose during the trial was whether it was significant that the images filed in relation to the first registered design showed the product as coloured blue. The company argued it was not. The court decided it was.

It said the appearance of colour in a registered design operated to limit the scope of protection given by registration of the design, so that the colours used should be taken into account when deciding the extent of the protection conferred by it.

It said that if the company had wanted to protect only the shape of the bath from being copied then “…instead of positively choosing the colour blue, it could have provided a line drawing (as it did for [the second design]) or rendered it in monochrome shades of grey. In my judgment that colour choice limits the scope of protection…”.

The court therefore ruled that when deciding what overall impression the first registered design gave, the hypothetical 'informed user' would take into account the fact that the rival’s product was white and the company’s product was shown in the images as blue.

The rival’s design did not infringe the company’s first registered design.

Operative date

  • Now

Recommendation

  • Businesses or individuals registering a design in the EU or in the UK should note that submitting images in colour will limit the scope of the protection given by the registration to products in that colour, and so should avoid using CAD software that automatically renders images in a particular colour.

Case ref: Shnuggle Ltd v Munchkin, Inc. & Anor [2019] EWHC 3149

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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