UK Intellectual Property Office Details Absolute Grounds for Refusal in Registered Designs Examination

The UK Intellectual Property Office (IPO) has issued an extensive practice guide addressing absolute grounds for refusal under the Registered Designs Act (RDA), providing clarity on the criteria for design protection and examination procedures. This guidance is essential for applicants seeking registered design protection in the UK and covers multiple facets including the definition of a design, novelty, individual character, technical function, morality, and emblems.

Central to the guidance is the interpretation of “appearance” as the aspect of a product’s look, which may derive from a combination of elements such as shape, colour, and material. Importantly, the law does not require a design to be aesthetically pleasing; even designs considered unattractive can qualify for protection, consistent with recital 10 of Council Regulation (EC) No 6/2002.

The RDA allows protection for the appearance of entire products or just parts thereof. For example, while the design of a kitchen table as a whole can be protected, the design of a single table leg may also be registered independently without covering the entire table.

Colour is explicitly recognized as a protectable feature under Section 1(2) of the RDA. Applicants may file designs in colour, greyscale, or black-and-white. When filed in colour, the specific colouration forms part of the protection; in greyscale, tonal contrasts are considered. However, the IPO does not accept applications that seek to protect a single colour per se, and such filings will be objected to. Further details on colour representation are provided in the guide’s section 11.08.

Applicants must clearly specify the nature of their design by completing the relevant application form section titled “About the design - What product is your design going to be used on or incorporated onto?” This ensures the IPO understands the product context for the design.

For repeating surface patterns, such as those applied to wallpaper or textiles, Rule 4(7) requires applicants to describe the design accordingly and submit representations that demonstrate the pattern’s infinite repeatability. The guidance illustrates acceptable and unacceptable examples, distinguishing between repeating patterns and self-contained two-dimensional designs.

Complex products, like petrol lawnmowers, may be protected as a whole. However, individual components that are not visible during normal use are excluded from protection under Section 1B(8) of the RDA, as detailed in paragraphs 3.09 to 3.10 of the guidance.

The RDA’s definition of “product” in Section 1(3) encompasses industrial or handicraft items, including two-dimensional images and logos, alongside three-dimensional shapes. To qualify, the item must have undergone an industrial or craft process. Naturally occurring items such as fruits, vegetables, people, or animals do not meet this definition and cannot be protected. Nonetheless, artificial representations of such items may qualify if disclosed as artificial in the application.

While computer programs themselves are excluded from design protection under Section 1(3), the IPO clarifies that the physical appearance and layout of digital media can be protected. This includes computer icons, screen saver graphics, animated designs, graphical user interfaces (GUIs), and web pages, provided they meet RDA requirements.

Digital media designs may be static, such as web page layouts and GUIs, or non-static, including animated screensavers and dynamic icons. Applicants can represent these designs using screenshots or line drawings that depict the configuration of graphic elements. The guide provides further instructions on formalities for animated or dynamic designs in paragraphs 11.34 and 11.35.

Examiners assess animated or dynamic design applications on a case-by-case basis, emphasizing that design protection covers only visual appearance, not functionality. Therefore, registering the visual characteristics of digital content does not confer protection over its operational aspects.

A fundamental principle in design registration is that representations must convey a clear and unambiguous overall impression of a single, unitary design. This clarity enables both the registrar and third parties to determine whether subsequent designs differ sufficiently to avoid infringement or validity issues.

While this clarity is straightforward for traditional designs involving product shape or surface ornamentation, it presents challenges for animated or moving designs. Current filing requirements mandate static representations, which may complicate the depiction of dynamic elements.

This comprehensive guidance from the IPO serves as a critical resource for designers, legal practitioners, and businesses navigating the complexities of registered design protection in the UK, ensuring applications meet statutory requirements and withstand examination scrutiny.