Industrial designs – How to register a design to have it effectively protected?

An entity which has, by law, a right arising from the registration of an industrial design becomes exclusively entitled to use the design for earning or professional purposes all over Poland (in the case of a national registration).

Is it ok?

Unfortunately, the practice shows that in certain cases the very registration of an industrial design is not sufficient to protect the authorised entity’s interest in an effective way.

1. What are industrial designs? How are they protected?

In accordance with the definition of an industrial property right, as set out in the statutory act, a design is a new form of a creation or a part of a creation which has a unique character resulting, in particular, from characteristics of lines, contours, shapes, colours, texture, materials and ornaments.

The legal definition can be easily depicted with a combination of terms “industrial pattern” and “design” (which is not clear, however) as each design is a creation (product) of a defined external form, provided that such a form is new and unique.

Industrial designs are protected on the basis of rights arising from their registration.

The right arising from the registration may be granted on the basis of national procedures (protection within Poland), EU procedures (protection within the EU territory) and international procedures (protection in selected countries).

The protection arising from the registration of the design based on national procedures is, as a rule, valid for 25 years from the registration of the design with the Patent Office.

During the protection period, the entity holding the right arising from the registration of the design is entitled to forbid third parties to produce, offer, trade, import, export or use the product that incorporates or applies the reserved industrial design, but the right arising from the registration applies to each design that does not make a different general impression on the so called well-informed user.

2. Scope of protection of the right arising from the registration of the design

The above regulation may be about a deceptive belief that filing an application for the registration of an industrial design and registering such a design provides the authorised entity with full protection against violation, including without limitation, the violation of the design consisting in a third party marketing a product incorporating the industrial design which has been registered.

In practice, there is a significant problem here: when a product (let’s call it a similar product) incorporates a reserved industrial design and what elements are protected as a result of the registration.

The problem can be depicted convincingly with a dispute that has taken place in the UK several years ago between Magmatic, a producer of Trunki suitcases for children, designed by Robert Law, founder of the company, and PMS International Group, which marketed its Kiddee suitcases as its own product.

The dispute covered two confusingly similar suitcases for children, which were originally designed as a response to the problem of (comfortable) air travel with small children. Distinguishing features of the Trunki product, whose industrial design was registered, included: the size of the suitcase which can be taken by travellers inside the plane, the shape of the suitcase on which the child can sit (and the suitcase with a child can be pulled by a parent by the attached “leash”) and the patterns of the suitcase which were attractive to children.

Notwithstanding the individual customer’s assessment of the extent to which Kiddee suitcases are similar to the Trunki’s design, the judgement made in 2016 by the Supreme Court to finalise the dispute between Magmatic and PMS generated a stormy discussion in the environment of designers and conclusions arising therefrom have a real impact on the assessment of design protection.

Inspiration which is not violation

During the trial, PMS International Group admitted directly that the Trunki design was an important inspiration for the Kiddee product.

Looking at pictures of both products, you can have an impression, which is reasonable in the author’s opinion, that the design of the Kiddee suitcase constitutes a substantial borrowing from the Trunki design. The court of the first instance was of a similar opinion and stated that the marketing of the Kiddee product violated the right arising from the registration of the industrial design of Trunki.

The court of appeal and the Supreme Court were of a completely different opinion and did not find any signs of violation by PMS International Group.

Reason?

Examining the case with tongue in cheek, you can say that horns were Magmatic’s undoing.

While comparing the industrial design of the Trunki suitcases with the Kiddee product, the court of appeal and then the Supreme Court negated the assessment made by the court of the first instance (which was positive for Magmatic) with regard to the violation of the right arising from the registration of the PMS product based on one important (in the court’s opinion) characteristic of the Trunki product, i.e. animal horns.

In the court’s opinion, given the manner of presentation of the Trunki product at the application-for-registration stage, one of important (distinguishing) characteristics of the product was to make an impression of an “animal with horns”, while the Kiddee design did not contain such an element (the court compared the Kiddee suitcases in the form of, for example, a ladybird with antennas imitating tentacle in the place of the supposed Trunki’s horns).

Another of characteristics that were to prove that PMS International Group did not violate the law was, in the opinion of the court of appeal, which was then shared by the Supreme Court, shading used in the presentation of the Trunki industrial design, based on which the courts assumed that one of the substantial characteristics of the registered Trunki design was the existence of the product in two contrasting colours.

Based on the above, the courts decided that the protection arising from the registration of the Trunki design only covered the shape of the suitcase (including elements of horns) available in two contrasting colours.

It seems that Magmatic’s failure in the dispute with PMS International Group resulted from the way the Trunki product was presented at the application-for registration stage.

The application for registration of the Trunki industrial design contained a computer assisted 3D design of the suitcase. From designers’ point of view, it was, probably, the best way to reflect the industrial design which harmonised with the technology used then by designers. Unfortunately, as the judgement on the Trunki case indicated, the use of the modern technology to prepare an application for registration can be unfavourable and, in marginal cases, like in the case of the dispute between Trunki and PMS, may result in the limitation of the protection solely to certain product characteristics which will be interpreted by the court out of the application for registration. In the worst case, the interpretation will not be consistent with the intention of the entity registering the design.

Idea outside protection

The judgement on the Trunki case also confirms one of the basic rules, applicable in the Polish statutory act as well, where the protection arising from the registration of an industrial design does not apply to the idea, i.e. the underlying concept of the creation, whatever the innovativeness.

The registration of the industrial design only protects the design within the specific manner of presentation of the product (i.e. the external form of the creation).

Therefore, it is essential to prepare a relevant application for registration in order to ensure the maximum, although limited, protection stemming from the registration of an industrial design. The graphical presentation of the design to be registered is one of elements that must be properly presented, which is illustrated well by the judgement on the Trunki and Kiddee suitcases.

3. Application for registration of an industrial design

To protect the industrial design in Poland, it must be adequately registered with the Patent Office.

The industrial property law provides for obligatory elements that must be specified in the application for registration. These are:

• an application which contains at least:

– the name of an entity applying for registration;

– the specification of a thing to be registered, and

– a request for granting the right arising from registration;

• an illustration of an industrial design.

In addition, the entity applying for registration may supplement a description that explains the illustration of an industrial design.

The illustration of an industrial design, including the explanatory description, if any, which plays an auxiliary role, is the most important element of the application for registration, in particular from the practical point of view.

As an industrial design is a form of a creation (or a part of a creation), the illustration of the industrial design at the application-for-registration stage is an element that, in particular in the case of a dispute concerning the violation of rights arising from the registration, which determines which elements of the creation are protected.

Given the case concerning the Trunki and Kiddee suitcases, the way a design is presented at the application-for-registration stage is likely to determine the scope of protection in disputes concerning the violation of rights arising from the registration.

Kamila Spalińska, Attorney-at-law