Following the Supreme Court’s finding against Magmatic Limited, makers of the Trunki (see our previous article here), a selection of IP experts recently held a seminar to discuss the practical implications for design law. The renowned line-up included Michael Hicks and Mark Vanhegan (who had acted as counsel for and against Trunki respectively), Nathan Abraham, Head of UK Examination Practice for Trade Marks and Designs at the UKIPO, Martin Howe QC, Guy Tritton and His Honour Judge Hacon.
The breadth of topics covered and opinions given illustrate the importance of this case for design law in the UK.
What are the practical implications of the decision?
Absence of ornamentation
The decision that absence of ornamentation is capable of protection as a feature was positively received amongst the speakers for bringing UK design rights in line with European law. Albeit, the decision made no reference as to whether the Trunki featured absence of ornamentation or whether the same rule could be applied to the “Like for Like” test. The UKIPO continues to wait for a reference on this to the CJEU.
“Shape only” designs
Although disclaimers cannot be used for interpretation of “shape only” designs on the European register, Mark Vanhegan indicated there was “no harm” in including some wording and referred to circumstances where the EUIPO had taken it into account.
Value of Community Registered Designs
The panel indicated their support for registered designs, but highlighted the importance to designers of reviewing their existing portfolios and considering multiple applications in order to widen the scope of their protection. With the UKIPO reducing UK filing fees later this year, designers may benefit from filing a large number of applications and internationalising the most successful.
3D models as trademarks
As a wider discussion point, the experts weighed up the pros and cons of registering 3D models as trade marks. Whilst trade marks benefit from a long period of protection and prior art is not of concern, the experts, citing the recent Nestlé v Cadbury “four-finger KitKat” case where Nestlé failed to register the shape of the bar as a trade mark, highlighted the difficulty in proving association between the mark and the proprietor. Essentially, this option will only be available in limited circumstances.
Bringing claims in the IPEC
Intellectual Property Enterprise Court (IPEC) judge HHJ Hacon gave advice for those considering claims via this system, including:
- designers relying on unregistered design rights should pick no more than their best five “sub-designs” and submit their claim based on those; and
- “commonplace” arguments (that design right does not subsist, because the feature in question is commonplace in the field) have a high barrier to success. If you do not think you can meet it, do not plead it.
Although HHJ Hacon heralded the IPEC system for its swift processing, we find that in practice, alternative methods often offer a cheaper and quicker solution for businesses. Those methods include, for example, issuing claims in the Mercantile Court (a division of the High Court) in regions outside London, such as Bristol, where the courts are less busy and the judges are well-versed in IP claims, and the new Shorter and Flexible Trials procedures in the Chancery Division.