Thought Leader: Jackie Johnson on Trademarks

As part of our thought leader focus on Intellectual Property, Lawyer Monthly has been talking to Jackie Johnson, a Partner at D Young & Co. specialized in trademarks. Jackie provides us with an update on the latest regulatory developments in the UK’s design landscape, with a particular excitement about the implementation of the UKIPO’s latest fee changes, procedures and the prospect of new opportunities following the recent Brexit vote.

What is the benefit in registering a design?

A Registered Design can protect the whole or part of your product and enable you to prevent competitors from selling or making products using the same or a closely similar design. Features that can be protected include the lines, contours and the shape of the product, colours and patterns, texture and/or ornamentation, packaging, getup, graphic symbols and typographic typefaces. As a design registration can protect packaging, getup and other symbols, it can provide an additional means to protecting certain trademarks.

Why would I register a design in the UK when I could register a Community Design across the European Union?

UK Registered Designs appeared to become less popular with the introduction of the Registered Community Design, which gives protection across the European Union (EU), obviously including Jackie Johnson, Partner at D Young & Co. the UK. However, the national UK route may now be heading for a renaissance in light of new guidance provided by the UK Intellectual Property Office (UKIPO), new procedures and reduced fees, as well as strategies for protection, following the UK’s decision to leave the EU.

What new procedures have been introduced?

The UKIPO introduced electronic filing for Registered Designs in the UK in September 2015, which is not only a welcome development for users but, owing to the associated cost savings, has resulted in reduced fees taking effect from October 2016.

How have the fees changed?

There is a relatively small discount for the filing of an application for one design via the online application service, as opposed to the paper service. However, where the applicant is filing an application for multiple designs, to ensure that different aspects of their design are protected, use of the electronic service gives significant discounts; for instance the fee for filing via the paper route is £60 for the first design and £40 for any subsequent design, whereas the new fee, via the electronic service, is £70 for up to 10 designs. Significant reductions are also being introduced for renewal of a UK Registered Design representing great savings, with an average saving of 59% for each five year renewal fee. We recommend that owners of UK Registered Designs carefully plan payment of renewal fees that are due on or after the 1st October 2016 to ensure that they benefit from the reduced rates.

You mentioned the UKIPO also introduced new guidance?

Yes – quite unusually for the UKIPO when it comes to designs, a practice note was issued in June 2016, primarily as a result of the judgment in the Supreme Court case PMS International Limited v Magmatic Limited ([2016] UKSC 9 March 2016). The guidance includes tips such as confirming that line drawings are best for representing shape alone and that an applicant is also advised to submit a written disclaimer or limitation in such cases confirming that “protection is sought for the shape and contours alone.”

Of course, it is always prudent to seek advice in connection with protection of a design to ensure that the most appropriate representations are filed to give the best ambit of protection.

What about reliance on existing Community Design Rights?

Similarly to existing registered EU trademarks, existing Registered Community Designs will no longer be effective in the UK after the UK’s exit from the EU. It is anticipated that transitional provisions will be introduced so as to allow for the opportunity to extend the Registered Community Designs to the UK. However, for best practice, it is advisable now to consider filing both Registered Community Designs and UK Registered Designs simultaneously for all new design filings. It is also important to remember that Community unregistered design rights will cease to apply in the UK. Whilst there is already a separate UK national unregistered design right, this differs from the Community right in a number of respects. In particular, the UK right protects the shape and configuration of a product, whereas a Community unregistered design right covers the appearance of a product, including features such as colours, texture and ornamentation. The UK Government will therefore need to consider whether to legislate to extend the national right to include the additional features currently covered by the Community right, thereby closing this gap in protection.

Do you have any closing points?

The introduction of reduced fees by the UKIPO has come at an ideal time, bearing in mind that businesses and designers are now having to consider separate protection in the UK in light of Brexit. Design law is constantly developing, but often subject to less press coverage. We encourage people to take advice as regards protecting important designs at an early stage. For those with an interest in design law, please contact us for a copy of our recently published European Design Law book – an invaluable reference guide to key decisions in this fast-moving area.