Magnetic Ball registered design invalidated by UKIPO

The UK Intellectual Property Office has invalidated a registered design for “3D Multi-colour Magnetic Balls” following a revocation application (Decision No. O/652/21).

The decision highlights the strategic importance of using disclaimers in design applications, particularly in relation to colour and material.

The earlier registered design (No. 6072154) depicted a monochromatic hexagonal stack of magnetic balls and included a disclaimer that excluded protection for colour and material. The registration contains six views, one of which is reproduced below:

By including a disclaimer to colour and material, the scope of protection of this earlier design covers shape and configuration, irrespective of colour or the material used. This proved decisive in the invalidation proceedings, as it meant that the UKIPO disregarded the multi-coloured appearance of the later filed design, which contained only a single representation (reproduced below):

As the colours used in this later filed design were deemed irrelevant, the designs were found to be identical as both designs have the same shape and configuration. The later design was therefore invalidated for lack of novelty and individual character as it did not produce a different overall impression on the informed user.

The decision highlights the importance of considering whether visual elements like colour or texture are essential to the distinctiveness of a design prior to filing. If colour and/or texture are not important, the representations illustrating the design should be filed using greyscale images and a disclaimer added to ensure that broad protection is obtained that includes all colour and material variants.