Williams Powell

British and European Patent and Trade Mark Attorneys

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General IP

Category contains 1 blog entry contributed to teamblogs

In the wake of the UK Supreme Court's Trunki decision, designers may now be questioning the value of registered designs to protect their products in the UK.  However, during a panel discussion at the ITMA designs seminar on 27 April 2016, Mark Vanhegan QC and Michael Hicks (who represented the parties in the case), and Nathan Abraham of the IPO pointed out that design registration still represents good value for money and gave the audience some practical tips on how to secure valid protection.

Advantages of design registration:

•Relatively cheap

•2D designs can be protected 

•Provides an absolute monopoly (there is no need to prove copying)

•There is a grace period, which could be useful if there has been accidental disclosure before registering

One point to note is that many registered design cases are settled before ever making it to court so we do not hear about them.  This demonstrates that registered designs can still be useful in providing protection.

Practical Tips:

Different types of representation provide different scopes of protection and therefore cover different designs.  Each design can include several representations, but these should therefore all be of the same type.  We would recommend, for each product, filing at least three sets of representation: line drawings (to provide broad protection for the overall shape), black and white photos or CAD designs (not limited to particular colours, but protects different tones to the product), and full colour photographs (to protect the specific product itself).  By filing a series of different representations with a range of level of detail, one would hope that at least one would be both valid and infringed if tested.  An example of what might have helped in the Trunki case can be found below:



The United States of America and Japan have joined the Hague System for the International Registration of Industrial Designs, a system that provides a cost-effective way of registering industrial designs in 64 countries.


The Hague System allows a single application to be filed centrally and registered in the 64 countries which now include USA, Japan and the EU.


An international registration produces the same effect of a grant of protection in each of the designated countries as if the design had been registered directly with each national office, unless protection is refused by the national office.  Registered design protection varies from country to country and can last from 15 to 25 or more years.  The Hague System comes into effect in USA on 13 May 2015.  For more information on protecting your designs, please contact us.

Can copyright cover software functionality in Europe? EU Advocate General thinks not.

The boundary between types of Intellectual Property is not always clear. Occasionally, different Intellectual Property types may provide overlapping protection.  For example, a widget may be protectable by both patents and registered designs.

One argument that is raised by opponents of patents for computer implemented inventions is that copyright already provides more suitable protection. However, the extent to which copyright protection extends beyond the code into the "look and feel" or functionality of software has, at least in the UK, never been clear. Copyright infringement generally requires copying of the copyright material to be proven.  Computer software is protected in Europe as a written work and therefore a logical (although narrow) construction would be that copying must be of the written work - the software code, object code, binaries etc. However, UK Courts have reached different conclusions in the past, providing at least some protection under copyright to look and feel.

This issue is the subject of the case SAS Institute Inc v World Programming Ltd that is being considered by the UK High Court.  There appears to be no dispute over copying of actual code - SAS's complaint is that World Programming Ltd copied functionality of the SAS system and its language. As UK law in thsi area is set at the EU level, there is only limited discretion for the Courts to interpret issues it may consider to be unclear.  In the present case, the Judge has referred several questions to the European Court of Justice on interpretation of the law.

As part of the referral process, the EU Advocate General has issued an opinion suggesting that the narrow construction set out above is correct.  He suggests that the Court of Justice should hold that copying of functionality is not an infringement of copyright provided that a substantial part of the original program (code) is not reproduced in the process of copying that functionality.

Guidance on proper interpretation of the law in this area can be expected from the Court of Justice in due course.  The Court of Justice is not bound by the Advocate General's opinion and does sometimes reach different conclusions/interpretation of the issues.  Nevertheless, the scope of copyright protection of computer programs in Europe could well be clarified (and narrowed) shortly.

My personal opinion is that the Advocate General's opinion is correct -  Protection of functionality should be left to the patent system, copyright is about protection of the expression not the idea.