UK IPO Issues Detailed Guidance on Absolute Grounds for Registered Design Refusals

The UK Intellectual Property Office (UK IPO) has released an updated examination practice guide focusing on absolute grounds for refusal under the Registered Designs Act (RDA). This guidance provides detailed explanations on the statutory requirements and practical considerations for design protection in the UK.

Central to the guidance is the definition of a design’s ‘appearance,’ which encompasses the visual aspects of a product such as shape, color, and material. Importantly, the law does not require a design to be aesthetically pleasing; protection can be granted even if a design is considered unattractive. The RDA allows protection for the appearance of an entire product or just a part of it—for example, the design of a table leg can be protected independently from the whole table.

Color is explicitly recognized as a protectable feature under Section 1(2) of the RDA. Applications may be filed in color, greyscale, or black-and-white. When filed in color, the specific coloration forms part of the protection; in greyscale, tonal contrasts may be protected. However, the UK IPO does not accept applications seeking to protect single colors per se, and such filings will receive objections. Applicants are advised to clearly specify the product to which the design applies in the application form’s relevant section.

The guide also addresses repeating surface patterns, such as those applied to wallpaper or textiles. Under Rule 4(7), applicants must describe the design as a repeating pattern and provide representations demonstrating its infinite repeatability. The guidance contrasts acceptable repeating patterns with self-contained two-dimensional designs, which, while registrable, do not qualify as repeating surface patterns.

Complex products, such as petrol lawnmowers, may be registered as a whole. However, component parts that are not visible during normal use do not qualify for protection, consistent with Section 1B(8) of the RDA.

The RDA’s definition of ‘product’ includes any industrial or handicraft item, encompassing both two-dimensional images and three-dimensional shapes. To qualify, the item must have undergone an industrial or handcrafted process. Naturally occurring items like fruits, vegetables, people, or animals are excluded from protection. However, artificial representations of such items may be eligible if clearly disclosed in the application.

While computer programs themselves are excluded from design protection under Section 1(3) RDA, the physical appearance of digital media elements can be protected. This includes graphical user interfaces (GUIs), computer icons, screen saver graphics, animated designs, and web page layouts. Both static and dynamic digital designs may be represented through screenshots or line drawings illustrating their visual configuration.

Examiners assess animated or dynamic designs on a case-by-case basis, noting that design protection covers only visual appearance, not functionality. Applicants should ensure that representations convey a clear, unitary overall impression to facilitate third-party assessment of validity and infringement risks.

The guidance emphasizes the importance of clear and unambiguous representations. This requirement is straightforward for traditional designs but presents challenges for animated or moving designs, which must currently be represented through static images.

This comprehensive guidance aims to assist applicants and practitioners in navigating the complexities of registered design protection, ensuring compliance with statutory requirements and improving the quality of design filings at the UK IPO.