Background

In the context of obtaining a UK design registration, it is sometimes the case that the various views from the design registration might (regrettably) contain an inconsistency. This can most often arise, for example, in cases where the views from the design registration are depicted in black-and-white line drawing format, and where some of the lines from these views are depicted in a dashed line format (for the purposes of disclaiming these features from the scope of protection which is afforded to the design registration). In these cases, it might be that an inconsistency arises as a result of how these dashed lines are employed, for example as a result of a first view from the design showing a given line in dashed lines, but with another view showing this same line in solid lines. Where this happens, this inconsistency casts doubt on the intended scope of protection, and more fundamentally means that the various views depict two different designs (of two different scopes).

To the extent such an inconsistency is picked up during the initial examination of the UK design registration, an examiner may object to this inconsistency under s1(2) Registered Design Act [RDA] 1949, on the basis that the inconsistency means the design in question relates to more than one design, as opposed to just a design:

s1 RDA 1949: registration of designs

1. A design may, subject to the following provisions of this Act, be registered under this Act on the making of an application for registration.
2. In this Act “design” means 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…

In response to this objection, one or more of the inconsistent views from the design can be removed, or one or more of the views can be amended, to correct the inconsistency between the views.

If such an inconsistency is not spotted by the Examiner during the initial examination of the design, such that it goes through to registration with this inconsistency present, this has the potential to create a fatal weakness in the resultant UK design registration, under s11ZA(1)(a) RDA 1949:

s11ZA RDA 1949: grounds for invalidity of registration

1. The registration of a design may be declared invalid - on the ground that it does not fulfil the requirements of section 1(2) of this act…

This is because s11ZA(1)(a) RDA 1949 allows any UK design registration to be invalidated where it does not comply with s1(2) RDA 1949, which can be argued (as an examiner would otherwise do so, was it during the initial examination stage of the design) where the views from the UK design registration contain an inconsistency between them.

Example

The potency of an invalidity argument under s11Z(1)(a) RDA 1949 can be seen from Patents Court decision [2023] EWHC 3250 (Pat), where such an argument was successfully presented by the defendant in response to an allegation of infringement of three UK design registrations (namely 90002293490001; 90003121450004; and 90003121450005) by the claimant. The UK design registrations in question related to builder trestles (scaffold-like structures).

In respect of each of these UK design registrations, the judge concluded that a plurality of inconsistencies were present between the views of each of the three UK design registrations. The judge therefore concluded that each of the UK design registrations related to more than one design, and that consequentially each of the UK design registrations was not validly registered (see in particular paragraphs 223-236 from the decision, link below) in accordance with s1(2) RDA 1949.

Post-registration correction

To the extent an application is made to invalidate a UK design registration under s11ZA(1)(a) RDA 1949, due to there being an inconsistency between the views of the UK design registration, there is no possibility for the owner of the UK design registration, in response, to modify the UK design registration to address the inconsistency. This is because modification of a UK design registration, at the post-registration stage, is restricted (under s11ZD RDA 1949) to other grounds of invalidity which do not include s11ZA(1)(a) RDA 1949:

s11ZD RDA 1949: modification of registration

1. Subsections (2) and (3) below apply where the registrar intends to declare the registration of a design invalid under section 11ZA(1)(b) or (c), (1A), (3) or (4) of this Act.
2. The registrar shall inform the registered proprietor of that fact.
3. The registered proprietor may make an application to the registrar for the registrar to make such modifications to the registration of the design as the registered proprietor specifies in his application.
4. Such modifications may, in particular, include the inclusion on the register of a partial disclaimer by the registered proprietor…

Furthermore, and in the event that a UK design registration is then invalidated under s11Z(1)(a) RDA 1949, it also may not be possible to validly re-submit a new/corrected UK registered design application [having a later date of filing], if the underlying design has been publicly disclosed for more than 12 months before this later date of filing. This is because the re-submitted UK design registration would then lack novelty over the earlier disclosure(s) of the same design. Put differently, if an invalidation action of a UK design registration is made more than 12 months after the date when the UK design registration was published, any re-submission of the UK design registration, where its views are corrected, would not be validly possible.

In short

To the extent UK design registration protection is contemplated for a given design, great care should be taken at the pre-submission stage to review the proposed views for the UK design registration, to identify (and remove) any inconsistencies between these views.

Particularly for designs employing very complicated/detailed views, if there is a concern that one or more inconsistencies might nonetheless remain in these views, in spite of best efforts to remove them beforehand, thought might be given on whether to additionally pursue a second design (in the same UK registered design application) which contains only a single view, such as a single perspective view. In this way, such a second design would then be much better shielded from any subsequent invalidation attack under s11ZA(1)(a) RDA 1949 / s1(2) RDA 1949.

Case details at a glance

Decision level: High Court of Justice, Patents Court
Parties: Safestand Limited (claimant) and (1) Weston Homes PLC, (2) Weston (Logistics) Limited, and (3) Weston Group Limited (defendants).
Date: 19 December 2023
Citation: [2023] EWHC 3250 (Pat)
Decision (PDF): dycip.com/2023-ewhc-3250-pat