There’s little doubt that the design and aesthetic appearance of consumer goods is becoming increasingly important to obtain an advantage over competitors. As a direct consequence an increasing value is being placed on obtaining designs protection. Design registrations can be (and very often are) used as a valuable deterrent for owner to use against infringers even if they aren’t ultimately enforced.
Design protection forms just one of the four primary types Intellectual Property; the other three types consisting of Patents, Trade Marks and Copyright. Patents are used for protecting a concept or the way something works, for example the working parts of a bike and the processes used to make its various components. Trade marks (for example the brand name and logo used on the bike) are commonly used to can in theory offer protection for 3D shape marks but these are difficult to achieve because exterior features of products are often considered to lack the required distinctive character. Copyright arises automatically in a work (for example the advertising jingle used on radio and tv adverts) but cannot be registered like a design. Designs could protect the shape and visual appearance of the bicycle and/or its various components. Often, more than one type of IP can be utilised for a single product.
Common questions regarding design protection are answered here by Richard Burton of D Young & Co LLP.
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Q. What can I protect?
It is possible to protect all or part of a product and/or its ornamentation. Using the bike example, it could therefore be that only the shape of the frame is new or innovative. Therefore commercially it is important to protect the shape of the frame on its own or by representing the rest of the bike in such a way that you disclaim protection for the unimportant parts.
Q. How long does a design registration last?
UK or Community registered designs can offer protection for up to 25 years (subject to renewal every five years). Community registered designs cover all 28 Member States of the EU and are increasingly popular for this reason. New designs can benefit from 3 years automatic protection as ‘unregistered’ designs; however, commonly they have a narrower scope than registered designs. Also, registered designs can be sold or licensed like other IP rights and more tangible forms of property.
Q. How much does it cost?
A design registration doesn’t have to be expensive and can be a low cost but effective additional string to the IP bow. A Community registered design (covering all 28 Member States of the EU) usually costs less than £1,000 (for 5 years protection, renewable for up to 25 years). That’s around £7 per country per year.
Q. How long does it take?
If you have ever filed a patent or trade mark application (or someone has for you) you may be under the impression that it can take months or even years to get hold of an IP registration certificate. Designs are an exception. Most applications are accepted within just a day or two, mainly due to the lack of any examination procedure; only formalities will be assessed when applications are filed. Therefore, it is possible to obtain a commercial advantage quickly and easily, no doubt one of the most attractive attributes of design registration.
Q. What’s the rush?
A designer has a 12 month grace period from the date on which a design was first made available to the public (for example through advertising, at a trade show or through sales) to register it. Earlier the better is a good approach. It is not generally recommended; however, sometimes this 12 month grace period is used as an way of releasing a product, seeing whether there is consumer interest in it and then protecting the design of it.
Q. But can’t I just wait?
A warning can be taken from a design case involving Crocs (the manufacturers of well known foam sandals or so called ‘clogs’ that became instantly recognisable around 10 years ago). The clogs design was successfully invalidated by a third party on basis that they were found to be in public domain in the US more than 12 months before registration of the design.
Q. Can I keep it a secret?
YES! A useful (and under-used) tool provides the ability to file a design application requesting deferment of publication for up to 30 months for EU designs and up to 12 months for UK designs. Therefore, even when an application is filed the design isn’t published immediately and can be timed to coincide product launch date.
Q. What about overseas protection?
Design protection varies substantially from country to country. A design that can be protected in the UK may not be accepted elsewhere. There is a lot of harmony in the EU where many countries have modern design laws but there are still countries that are playing catch up, one being China. Whilst there are complexities in not just obtaining but also enforcing protection in China where counterfeiting and infringements is unparalleled, there are ongoing IP reforms in progress and the authorities are showing an inclination to improve the situation. China remains a challenging market but designs, as with other forms of IP can increasingly be used effectively to combat counterfeits and infringements. Whilst the situation is far from ideal, some form of protection is almost always better than none.
Q. What is the scope of protection like?
In a highly publicised case involving Apple and Samsung, the Court held when comparing two tablet designs that Samsung’s tablets were “not as cool” as the Apple design. Ultimately the judge found that the overall impression of the two designs was sufficiently for Samsung not to have infringed Apple. This conclusion was perhaps to be expected since the Apple design was essentially a rectangular cuboid with an inner frame depicted on the front. The scope of design protection was therefore narrow. The take-home message: new designs that are markedly different from what has gone before will get broader protection.
Undoubtedly as designers and consumers we are becoming more and more obsessed with way our possessions look and feel. Exterior design features represent important marketing tools that influence consumer decisions. As with other forms of IP, design protection helps to ring-fence your rights and prevent others from gaining a benefit from your innovation. Investment in design protection is fast becoming a top priority for innovators and designers alike and rightly so due to the benefits that the investment provides. Therefore, whether for deterrent or enforcement purposes, design protection should be taken seriously.