Its not time to give up on design rights. But we all need to think more strategically and inclusively about design right applications. Why? Because without a more detailed approach to the application process the rights that result may be a lot more flimsy than anyone intended.
Does this mean it'll be a more expensive and time consuming process to register a design right? Not necessarily but it probably will mean lodging a more comprehensive suite of supporting materials and more careful thought to the format of how your designs are presented during the application process.
Businesses may have been caught off guard by the Supreme Court decision in the Trunki court case but what lessons can we learn from this decision?
* Get good expert advice when you register a design to be sure that your application is comprehensive, including details of any second or third best designs that came close but aren’t quite the same as your preferred final design; variations on your final design may be just as important to protect if you want to do all you can to prevent a ‘not quite copycat’ from free-riding on your efforts and damaging your revenue potential and or competitive advantage;
* Photos, detailed descriptions and other supporting documentation should all be included to avoid any ambiguity about what you’re protecting and how broadly the scope of that requested protection extends;
* Unless colouring or shading is a fundamental part of the appearance of your designed product, think twice about including it in your design application – or if you do, consider the extent carefully. (Magmatic’s Trunki design application presented a three dimensional shape in two contrasting colours. The courts considered that the colouring and shading was intended to be a fundamental part of the design and that the rival Kiddie Case design, which was more elaborately decorated, was distinguishable);
* Whilst not a guaranteed ‘clincher’, consider including line drawings of your design if you’re also including computer-aided design images in your application for registration. It seems that line drawings are more likely to be interpreted as including the possibility of some or more ornamentation in the design right granted (and so potentially preventing a more elaborately decorated rival from being able to distinguish itself from your designs and free-ride on your efforts).
Check out our one-pager headline analysis of what happened to Trunki and why here:
In a reserved judgment, five Supreme Court justices ruled in favour of PMS - a decision Trunki's founder said would bring a "wave of uncertainty for designers across Britain" as courts in other EU nations had taken a more robust approach to protection.