03/04/2024
This blog covers a recent design invalidation decision issued on a registered UK design.
Registered UK designs protect the appearance of the whole or a part of product, resulting from the lines, contours, colours, shape, texture or materials of the product or its ornamentation.
A valid registered UK design must be new and must have individual character, meaning that the design must produce a different overall impression compared to existing designs that have been made available to the public.
The validity of a registered UK design can be challenged by filing an invalidation against the design at the UK Intellectual Property Office.
Design Decision O/0266/24
This design decision is on an invalidation that was filed against registered UK design no. 6106279. The full decision can be found here.
Registered UK design no. 6106279 (“the registered design”) is directed to a bottle opener design and has the following images:
The registered design includes full colour photographs and the colour and surface decoration is not disclaimed.
The invalidity applicant applied to invalidate registered UK design no. 6106279 on the grounds that the design is not new and does not have individual character.
Prior Art
In support of their invalidation, the invalidity applicant filed a Chinese patent from 2015, a Chinese patent from 2018 and three Amazon UK product listings.
Under UK design law, a prior art design has been made available to the public if it has been published, used or otherwise disclosed, and it could reasonably have become known in the normal course of business to persons carrying out business in the UK or the European Economic Area and specialising in the sector concerned.
The Hearing Officer decided that the three Amazon UK product listings were disclosed in the UK, and so are prior art, but that it is not clear whether the two Chinese patents could reasonably have been known by the relevant sector in the UK or the EEA. Consequently, the two Chinese patents were not considered to be prior art.
Comparison
The Hearing Officer compared the registered design with the most promising of the three Amazon UK product listings.
Is the Registered Design New?
A registered UK design is new if no identical design or no design whose features differ only in immaterial details has been made available to the public. The term “immaterial details” means details which are only minor and trivial in nature and not affecting the overall appearance. The Hearing Officer considered that the registered design and the prior art have many features in common, such as a cylindrical shape, a convex top and the features circled in the below image produced by the Hearing Officer.
In addition, the Hearing Officer also took into account the surface decoration on the registered design. The registered design has a black colour whereas the prior art design has a silver colour, and the registered design has a distinctive logo that is different to the logo on the prior art. The Hearing Officer also identified that the registered design has small square holes on its left and right side, whereas the prior art has a small square hole only on one side.
The Hearing Officer decided that the differences between the registered design and the prior art are more than immaterial details and therefore concluded that the registered design is new.
Does the Registered Design have Individual Character?
A registered UK design has individual character if it produces a different overall impression on an informed user compared to existing designs that have been made available to the public.
Following Dyson Ltd v Vax Ltd, the Hearing Officer decided that when comparing the overall impression of the registered design to the overall impression of the prior art, the undersides of the bottle openers should be given a lower weight because a bottle opener must have certain necessary components in order to be able to remove a bottle cap.
The Hearing Officer found that the differences in colour and surface decoration between the registered design and the prior art design mean that the registered design creates a different overall impression compared to the prior art design. Therefore, the registered design does have individual character.
Summary
The registered design is new and has individual character.
Therefore, the invalidation filed against the registered design fails.
Our Comments
This design decision is reasonably straightforward because of the significant differences in the surface decoration between the registered design and the prior art.
When filing prior art in an invalidation, it is important to remember that the appearance of a registered design results from not only its shape, but also from its lines, contours, colours, texture and materials, and its ornamentation. Therefore, prior art filed in an invalidation should ideally have a similar colour scheme to the registered design, if the colour of the registered design is a prominent feature and is not disclaimed.
This decision also highlights one of the difficulties that is encountered when considering a filing strategy for a registered design application. The scope of protection conferred by using line drawings is not limited by colour and so line drawings can be used to provide a relatively broad scope of protection. However, since line drawings are not limited by colour, colour cannot contribute to providing a different overall impression over the prior art, which increases the risk that the registered design may be found to lack individual character and therefore be invalid. For example, would the registered design in this case still be found to be valid if it was filed with line drawings rather than colour photographs?
A good filing strategy may strike a balance between scope of protection and likelihood of validity. In this case, the scope of protection conferred by the registered design seems to be rather narrow, but this has proven to be useful in this invalidation.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
