The protection provided by a design registration is dictated by the depictions of the design in that registration. Line drawings are a popular approach for depicting a design. The aim of using line drawings is normally to claim the overall shape, lines and contours, while not being limited to any particular surface appearance. However, the absence of features in a line drawing has also been asserted as positively excluding the presence of surface ornamentation, for example in the famous Samsung Electronics (UK) Ltd v Apple Inc case relating to Apple’s registration for a tablet computer.
In the case of Lutec (UK) Ltd & Ors v Cascade Holdings Ltd & Anor, line drawings were used to depict the design of “exterior lights” in two registered Community designs and the corresponding cloned UK design registrations. It was alleged that the defendants infringed these registered designs by selling exterior lights in the UK.
Figure 1: Comparison of one of the registered designs (left) with the alleged infringing product (right).
In order to distance the alleged infringement from the registrations, the defendants asserted that the infringing product had a ridged effect on its curved surface which was distinguished from the featureless appearance of the curved surface of the registration.
The judge dismissed this argument stating that “…it will be a very unusual case indeed in which a line drawing in a registered design claims an absence of surface decoration… In my judgment, this is not such a case”. The judge emphasised that this line drawing shows only the lines, contours and shape and so did not claim anything in relation to the surface colours, texture, materials or ornamentation of the product. Having interpreted the design depictions, the judge carried out the standard assessment for infringement by comparing the overall impression produced by both designs on the informed user. It was concluded that this overall impression was the same and so the defendants’ products infringed the registered designs.
The judge’s approach in this case is in line with the commonly-held view that line drawings provide a broad scope of protection by not limiting the appearance of the product’s surface. This case therefore provides an affirmation of existing practice. It also highlights the care that is needed if protection for a featureless and minimalist appearance is actually desired. This will need to be clearly conveyed in the registration. In the UK, supplying a written description of the design when submitting the application is one way that this could possibly be achieved.
The Designs team at Carpmaels & Ransford will be happy to assist if you have any questions about depicting your designs, or would like any further advice in relation to filing designs or design invalidity applications at the UK IPO or EUIPO.