A session dedicated to design law at last week’s MARQUES Annual Conference in Stockholm focused on using disclaimers, and included a lively audience quiz.

The panel session, “You can handle visual disclaimers in designs” was chaired by Oliver Nilgen, Meissner Bolte, Germany, a member of the MARQUES Designs Team and included Laura Gisler, Aera IP, Denmark; Axel Beks, Atlas Copco, Sweden; and Silke Weiss, Senior Legal Officer, Hague Legal Affairs Section, The Hague Registry, Brands and Designs Sector, WIPO.

The panel provided tips on using disclaimers in design applications, which included:

• Clear specification of visual disclaimers in the description
• Use dotted or broken lines. Alternatively, use colouring, colour shading or shading
• Be careful with the use of blurring, circles or boundaries
• Be careful when including disclaimers for different parts of a product in the same application.

To demonstrate the tips, they asked members of the audience to identify which parts of actual designs were disclaimed base on images from the applications.

Introducing the session, Oliver said: “Design protection is relatively cheap and easy to file. The biggest enemy is the novelty requirement so your filing strategy should be carefully planned. “ He highlighted relevant decisions on disclaimers including EU General Court case T-757/22 Puma SE v EUIPO.

Silke said there is a section dealing with visual disclaimers in the administrative instructions for the Hague System. “It really depends on the product whether you want a visual disclaimer or a description,” she said, adding that registered trade marks appearing on the product should be removed or disclaimed from the design application.

The most important thing is that the examiner knows what is intended to be claimed. “The examiner does t know if it is claimed or not. It’s important to have a clear description. Be consistent across all reproductions. The examiners see every difference,” said Silke. Among the IP5 offices, there is a clear preference for using a description supplemented by broken or dotted lines.

Laura explained how registered designs can help to build value in a company, complementing patent rights. This can be important internally, for investors and for the public. “Design filings really helpful in communicating what we were about,” she said, adding: “They are one of many tools and central for protecting brand language.”

“On top of protecting R&D it’s also about the message you want to spread to customers,” said Axel. “Design rights protect against copying and convey to customers the company’s current and future look.”

Design case law

In a separate session in which speakers reviewed CJEU case law, Maarten Haak of Hoogenraad & Haak, The Netherlands, a member of the MARQUES Unfair Competition Team, and Inga George, boesling IP, Germany, Co-Chair of the MARQUES Designs Team, reviewed several design cases:

• T-647/22 Puma: In this design case, an application for an RCD was refused because it was previously disclosed by Rihanna on social media.
• Case T-537/22 Lego: The design was not purely technical. The invalidity applicant has to show lack of novelty or individual character.
• Case T-757/22 Puma v EUIPO/Road Star Group: The Court found that Puma’s designs did not produce the same overall impression as that produced by an RCD application for a trainer. It said that “the disclaimed features of the earlier designs … could be taken into account in order to assess the individual character of the contested design.”

The MARQUES Annual Conference took place in Stockholm last week and further reports are on the Class 46 blog. Next year’s Annual Conference is in The Hague from 16 to 19 September 2025.