Design registration coverage
How much of a change avoids infringement?
Design registrations cover products which are ‘substantially similar in overall [visual] impression’ to what is shown in their representations.
So, what does ‘substantially similar in overall [visual] impression’ mean? Or, put another way, how much change is required to avoid infringement?
Myths such as ‘a 10% change avoids infringement’ are not helpful. The answer depends on a range of factors, and varies depending on the type of product.
The coverage of a design registration must be assessed from the point of view of an ‘informed user’ of the product and particular regard must be given to any features highlighted in the text of the design registration. The freedom of the creator of the design to innovate must also be considered.
In a court decision concerning truck tail lights, the registered design shown in Figure 1 was found to cover the product shown in Figure 2. The owner of the registered design stopped its competitor selling the lights and was awarded substantial damages.
Figure 1 – Registered design no. 302360
The design registration of Figure 1 included text highlighting the lack of visible screws. The infringing light of Figure 2 included screws which were visible but small, black and countersunk into the black surround. The court reasoned that the screws, even if given particular regard, did not change the overall visual impression of the light enough to avoid infringement.
Figure 2 – An infringing product