In a recent decision, the Court of Appeal have overturned a High Court decision which resulted in the invalidation of a number of re-registered designs owned by Safestand Limited. The re-registered designs in question were directed towards modular construction equipment, known as ‘builders trestles’.
The Court of Appeal decision raises a number of interesting points, including the clarification of how modular designs are to be interpreted in the UK and whether a lack of clarity is a ground for invalidity in respect of a UK registered design.
Modular designs
In the High Court decision, it was found that Safestand Limited’s registered design was invalidly registered as they were not considered to be a single design and therefore lacked clarity. Specifically, the High Court judge considered that the design included alternative embodiments for the following reasons:
· Certain components of the trestles, for example the handrails and the anti-flip brackets, were depicted in different colours in different figures. For Example, in one representation the handrails were coloured yellow, and in another they were coloured blue. The judge considered that these differently coloured components constituted different embodiments;
· Some representations of the registered design showed the builders trestle with a ladder holder extension or kickboard brackets, and others showed the trestle without these features. These were also considered to be different embodiments.
Section 1(2) of the Registered Designs Act 1949 defines the term “design” as “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation”. This definition has been interpreted such that the term “product” relates to a single product, or a set of articles which are linked by aesthetic and functional complementary and are usually sold together (Case T-9/15 Ball Beverage Packaging Europe Ltd v European Union Intellectual Property Office).
A modular product is a type of “complex product” as defined in Section 1(3) of the Registered Designs Act 1949 which consists of a series of standardised parts or units from which the complex product is assembled and thus, modular products such as builders trestles are registerable in the UK provided that they are a ‘single product’ once assembled.
On Appeal, it was found that the design did in fact relate to a single design, rather than different embodiments of a complex product. The Court of Appeal noted that the use of colour in the designs represented a code as to the different types of components included, and did not act to depict alternative embodiments of the design. In addition, it was found that the design of a single product may include items whose use is optional, particularly in view of Case T-357/12 Sachi Premium-Outdoor Furniture Lda v Office for Harmonisation in the Internal Market . Therefore, the Court of Appeal found that the designs were not invalid on the ground that the registered design was not a ‘single product’.
Lack of clarity
The question of whether a lack of clarity is a ground for invalidity in respect of a UK registered design was not specifically addressed by the Court of Appeal, as it was held that the registered designs in question did not lack clarity as it is clear that they are a single product.
However, the Court of Appeal judge did comment that the grounds for invalidity provided in section 11A of the Registered Designs Act 1949 is an exclusive list, which does not include a lack of clarity.
Conclusion
This decision highlights the importance of enduring that the representations of a registered design application are sufficiently clear, to enable the objective interpretation of the design, and that the features of the design are consistent throughout the representations to avoid the likelihood that they would be considered to constitute alternative embodiments.
The attorneys at Secerna LLP have in-depth experience of filing and prosecuting registered design applications in the UK and Europe, as well as various overseas jurisdictions, and can assist you with any design related matters. Please get in touch with us today.