Design registrations offer significant benefits. Amongst other things, they can help protect a brand's visual language. They can help to protect aspects of brand identity such as retail store layouts and the spatial and conceptual aspects that set a brand apart. When used effectively, they can be a powerful tool in preventing copycats.
The panel discussion on the use of visual disclaimers (and audience Q&A!) clearly demonstrated that these disclaimers are not used consistently and are often confusing without an additional text description. Whilst certain types of visual disclaimer may be accepted by EUIPO other countries tend to take a stricter view. Similarly, even if a registered design with a visual disclaimer is accepted by WIPO, it is likely to be refused registration by the national registries. Therefore, a more holistic approach is preferable.
Demystifying Visual Disclaimers in Design Applications
Visual disclaimers are crucial in design filings but come with complexities:
Lack of Unified Guidelines: There's no overarching legislation or common rules on using visual disclaimers, leading to inconsistencies.
Methods of Disclaimer:
Dotted Lines: As per EUIPO's CP6 guidelines, dotted lines indicate parts not claimed in the design. However, if everything is dotted, it raises questions about what is actually protected.
Broken Lines: These are used in a similar way to dotted lines but mixing the two can cause confusion.
Blurring: This method of blurring aspects which are not claimed as part of the design, such as a logo, is acceptable at EUIPO. However, blurring may face rejection elsewhere due to lack of clarity.
Colour shading and circling boundaries: These approaches can be used to highlight specific protected areas but acceptance varies by jurisdiction.
Using Visual Disclaimers Strategically
Visual disclaimers aren't just for legal filings—they play a strategic role internally:
Communication with Stakeholders: They help convey design concepts effectively to the C-suite and investors, providing a holistic view of what's being protected.
Early-Stage Companies: Start-ups and companies in their initial years, focusing on funding and listing, can use visual disclaimers to showcase their intellectual property assets.
Expert Tips for Effective Design Filings
Be careful when using dotted lines: Aim for clean filings without the need for office actions. Dotted lines must be consistent across all views, which can complicate filings, especially in countries requiring more than the standard seven views allowed in the EU.
Leverage Unlimited Designs in Single Filings: The EU allows multiple designs in one application, which can be cost-effective and strategic.
Navigating International Design Protection
When dealing with international registrations, several factors come into play:
The Hague System Guidelines:
Administrative Instruction 403: This specifies that any matter not claimed in the design should be indicated via dotted or broken lines, colouring, or a written disclaimer—but avoid mixing methods.
Written disclaimers: These can clarify aspects not evident through visuals alone and can be added if something was initially overlooked.
Jurisdictional Nuances:
Germany: Even with a written disclaimer, if a trade mark appears in the design, it's considered part of the design. It is better to file a design application with all trade marks removed before filing. This ensures all parties are clear about the scope and avoids any issues whether in Germany or elsewhere.
Blurring limitations: While acceptable in Europe, blurring is generally not permissible in Asia and the USA due to clarity requirements.
Responding to Irregularities:
WIPO Letters: If you receive an irregularity notice, you have three months to correct it. While WIPO may accept your application, local offices might still raise issues.
Refusals: Offices must provide solutions, and often the issues can be resolved with proper adjustments.
Common Pitfalls and How to Avoid Them
Inconsistent visual disclaimers: Ensure that disclaimed parts are consistent across all aspects of a design to avoid refusals.
Colour descriptions: Be clear and specific about colours. Vague statements like "the colour is disclaimed" can lead to rejections. Even saying e.g. "the colour blue is disclaimed" is risky if several shades of the colour blue are used.
Future Developments in Design Filing Practices
WIPO's Proposed Changes:
Mandatory Written Descriptions: Recognising the high rate of refusals related to disclaimers, WIPO plans to propose requiring written descriptions alongside visual disclaimers to enhance clarity.
Global Preferences: The ID5 offices (Europe, Japan, Korea, China, and the USA) show a preference for broken and dotted lines with accompanying descriptions.
Guidance from EUIPO CP6: The Common Practice 6 guide provides valuable insights into acceptable practices for visual disclaimers within the EU.
Final Thoughts
This session underscored the importance of meticulous planning and adaptability in design filings. Understanding the nuances of visual disclaimers and aligning strategies with both legal requirements and business objectives is essential. Whether you're an in-house counsel or external advisor, staying informed about international practices and upcoming changes can significantly enhance the effectiveness of your design protection efforts.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com
Comments