Case No. IP-2021-000119

The law9.The scope of protection of a registered design depends on what is shown in the image of the design as registered (subject to s7(4), see above). A potential complication is that it may not be self-evident which features are shown. In Magmatic Limited v PMS International Group plc [2016] UKSC 12, Lord Neuberger PSC, with whom Lord Sumption, Lord Carnwath, Lord Hughes and Lord Hodge JJSC agreed, said:[30] … It is, of course, up to an applicant as to what features he includes in his design application. He can make an application based on all or any of ‘the lines, contours, colours, shape, texture . . . materials . . . and/or . . . ornamentation’ of ‘the product’ in question. Further, he can make a large number of different applications, particularly as the Principal Regulation itself provides that applications for registration have to be cheap and simple to make. As Lewison J put it in Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] FSR 13, para 48:‘The registration holder is entitled to choose the level of generality at which his design is to be considered. If he chooses too general a level, his design may be invalidated by prior art. If he chooses too specific a level he may not be protected against similar designs.’So, when it comes to deciding the extent of protection afforded by a particular Community registered design, the question must ultimately depend on the proper interpretation of the registration in issue, and in particular of the images included in that registration.”10.Generally, issues of interpretation of the image in a registration arise when the image is a line drawing, as was the case in Magmatic (see also Lutec (UK) Ltd v Cascade Holdings Ltd [2021] EWHC 1936 (IPEC) at [15]-[24] and Rothy’s Inc v Giesswein Walkwaren AG [2020] EWHC 3391 (IPEC) at [53]-[66]). There are conventions regarding dotted lines, grayscale and so on.11.Where the image is a photograph of a product, the design claimed consists of the features – the lines, contours, colours, shape, texture, materials and/or ornamentation – visible in the photograph (again, subject to s.7(4)). Usually, there will be no problem of interpretation. The present case is an exception. The point at issue is whether one of the features of each of the RDs in suit is an integrated light in the base of the bottle.12.A design must be interpreted objectively; the circumstances of the proprietor of the design, and by extension the intention of the designer, are not relevant, see Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamiento SL (Case C-488/10) EU:C:2012:88, at [55].13.Objective interpretation of a design is a matter for the court – not the court viewing the matter through the eyes of the informed user, particularly since there is no reason to suppose that the notional informed user is aware of the conventional understanding of what dotted lines, grayscale etc. are intended to convey, see Sealed Air Limited v Sharp Interpack Limited [2013] EWPCC 23, at [20]-[21].14.Products manufactured by the proprietor which are said to be protected by the registered design are irrelevant to interpretation of the design. Samsung Electronics (UK) Limited v Apple Inc [2012] EWCA Civ 1339 concerned an allegation of infringement of a registered design owned by Apple, a design which was adapted in the creation of an early iteration of iPads marketed by Apple. Sir Robin Jacob, with whom Longmore and Kitchin LJJ agreed, said:“[4] So this case is all about, and only about, Apple’s registered design and the Samsung products. The registered design is not the same as the design of the iPad. It is quite a lot different. For instance the iPad is a lot thinner, and has noticeably different curves on its sides. There may be other differences – even though I own one, I have not made a detailed comparison. Whether the iPad would fall within the scope of protection of the registered design is completely irrelevant. We are not deciding that one way or the other. This case must be decided as if the iPad never existed.”15.Each of the RDs in suit contains the description “Light Up Gin Bottle”. Providing a description is optional under both the UK Registered Design Rules 2006 (“the 2006 Rules”), see rule 4(5), and under Regulation 6/2002, see art.36(3)(a). Both parties submitted that the description was irrelevant to the interpretation of the designs. That would certainly be true if these were registered Community designs, see art.36(6). I am not sure about the position in relation to UK registered designs for two reasons. First, rule 5(5) of the Registered Design Rules 2006, like art.36(6) of Regulation 6/2002, makes the indication of intended products irrelevant to the scope of protection. But unlike art.36(6) it says nothing about the description being irrelevant. Secondly, whereas the description is not shown on the public register of Community designs, it may appear in the public register of UK registered designs where it has (optionally) been provided by the applicant, see rule 11(2). It does appear in the RDs in suit.16.I raise this because if it is correct to say that the description is irrelevant in law to the interpretation of a UK registered design, it seems to me that there is a real possibility that members of the public consulting the UK design register could be misled if they are given a steer by the description in a registration when seeking to resolve an ambiguity in the image shown.This case17.I was pressed by Mr Selmi for M&S to look at the images of the four RDs in suit as they appear online on the ground that the images there more clearly show the integrated light feature. To my eye the two registrations with images created against a dark background, i.e. UK 82 and UK 84, show the integrated light feature, the other two do not.