How design rights can add value to a business
The original version of this article appeared in the
April 2006 issue of BNA International's Patents Copyrights &
Trademarks journal. It has since been updated and amended. It
was last updated in September 2008.
Introduction
Design rights are often overlooked by businesses seeking to
protect their intellectual investment in new products or new
technologies. This article looks at how design rights can add
effective and affordable protection and value to a business. The
article will:-
- give a brief summary of the existing design rights, the
protection which they offer, and how they differ from each other;
and
- show how design rights can provide valuable protection in many
business sectors, and how they are already being adopted by many
industries to deal with particular challenges.
Design rights: a summary
The table below provides details about the four main design
rights which businesses can seek to rely on to protect their
interests in the UK.
|
|
What does it protect?
|
When does the right arise?
|
Is it a monopoly right?
|
How long does it last?
|
|
UK Registered
Design
|
Protects the appearance of the whole or part of a product
resulting from features of, in particular, the lines, contours,
colours, shape, texture, materials, of the product or its
ornamentation.
|
On registration (application must be made within 12 months of
first being made available to the public).
|
Yes – it protects the use of third party designs created
entirely independently.
|
Initial 5 year term is renewable every 5 years, up to a maximum
of 25 years.
|
|
Community Registered
Design
|
Broadly the same as UK Registered Design, but extends across
entire European Union.
|
On registration (application must be made within 12 months of
first being available to the public).
|
Yes – it protects the use of third party designs created
entirely independently.
|
Initial 5 year term is renewable every 5 years, up to a maximum
of 25 years.
|
|
Community Unregistered
Design
|
The same as Community Registered Design.
|
Automatically when product first made available to the
public.
|
No – it only protects against direct copying.
|
Maximum of 3 years.
|
| UK Unregistered Design |
Protects any aspect of the shape or configuration (whether
internal or external) of the whole or part of an article. |
Automatically on creation
|
No – it only protects against direct copying.
|
10-15 years, depending on when the product is first made
available for sale or hire.
|
Community registered and unregistered and UK registered designs
have traditionally protected 'aesthetic' qualities of the object,
where these are new and show individual character. Examples include
decorative patterns, graphic symbols, the shape of products and
their packaging.
Conversely, UK unregistered designs protect the shape and
configuration of the design where these are original. This
describes those aspects of the object which have no aesthetic
element. Exclusions to UK unregistered design laws
essentially provide that design rights cannot be claimed:
where the design of an article is pre-determined by its need to fit
with another article so that both can work together (must-fit); or
where the design of the article is dependant on the appearance of
another article of which it is an integral part (must-match); or
where the design amounts to surface decoration. Examples include
component parts of a mechanical device.
The hidden value of design rights
Businesses are becoming
increasingly aware of the advantage that design rights can give
them over their competitors. Design rights can offer particularly
attractive benefits over other forms of intellectual property
right, for example, speed and simplicity of registration and
relatively low cost. The examples below show some ways in which
design rights have been adopted to meet the needs of particular
industries. Clever application of design rights means that a
product's value can be considerably extended.
- The low costs of design
registration, matched by the speed of a registration process
unencumbered by lengthy review, means that design rights are
perfect for manufacturers seeking to protect wide and ever-changing
product ranges. The toy industry has been quick to spot these
qualities. During the height of the craze for 'beanie babies',
their maker Ty Inc helped protect its monopoly position by
registering hundreds of its products for design protection. At
roughly the same time Mattel, the maker of Barbie dolls and
accessories, used its Community unregistered design rights to
convince the English Court of Appeal to grant a Europe-wide
injunction against a competitor selling infringing products.
- Design rights also present
a unique way for companies to protect new media and digital
products. While copyright will protect the underlying code of a
software application, arguments that it should also protect the
'look and feel' of the results displayed on the screen are
considerably harder to construct. However, the nature of design
rights means that they are ideally suited to protecting digital
images. This means protection of, amongst other things, video game
characters – like Lara Croft, the buxom star of the Tomb Raider
games. This has helped the game's developers to control and license
the use of Lara Croft's image in other media. The right has also
been widely used to protect graphic icons that appear in computer
applications and on mobile phones.
- Registered design rights
also offer the ability to achieve speedy infringement remedies –
important for fast moving industries. The fashion industry has a
notoriously short time for stock turnover, with fashions changing
by the season, if not more frequently. The potential risks of
damage mean that infringement action has to be quick and easy,
injunctions have to come almost before goods reach the shop floor.
The current phenomenon of no-frills fashion – clothing chains that
specialise in providing the look of designer fashion at bargain
basement prices – often strays into the realm of direct
copying. Community design rights have given fashion designers
a quick and easy means of protecting their designs in key markets,
allowing them to strike before the worst of the damage is
done.
Design rights and trade marks
Many businesses are also recognising the benefit of
incorporating design right protection into their broader portfolio
of intellectual property rights. Design rights can sit alongside
trade marks, providing a different level of protection and,
crucially, a different means of enforcement. Arsenal Football Club
is a good example of one such business.
In 2002 Arsenal Football Club was locked in the middle of a
three year trade mark and passing off battle against a seller of
unauthorised replica scarves. Arsenal was seeking to stop the sale
of replica goods which made unauthorised use of the club logo – a
heraldic crest with a picture of a cannon. The case was eventually
decided by the Court of
Appeal in Arsenal's favour, but a number of earlier
judgments had gone the other way.
As a result of the difficulties it was facing in enforcing its
rights, Arsenal took the decision to re-brand, abandoning the logo
used by the club for 53 years. The new logo is still made up of a
shield containing the image of a cannon, but it differs in almost
every single regard from the old logo. The heraldic shield has been
replaced by a stylised 'shield image'. The breach-loading cannon,
circa 1750, was replaced by a muzzle-loading cannon from the 15th
century. The cannon even points in a different direction.
Cynics saw it as a way of Arsenal forcing fans to replace
branded merchandise, but if anything this was only a side effect.
Arguably the real motivation behind the re-brand was to create a
logo with sufficient novelty to be able to benefit from design
registration as well as trade mark protection. The fact that
unlicensed use of a registered design is in itself sufficient to
prove infringement means that Arsenal now has a very direct means
of stopping unauthorised replica sales.
Design rights can complement trade mark protection. If a
word is registered as a trade mark and that mark also has a
stylistic element, the stylistic element can be registered as a
design. The advantages of design protection over trade mark
protection (which is also available) are that:-
- It is quick to register;
- There is no lengthy review by the design registry;
- The use of the design is not tied to any class of goods;
- Continuous usage of the design is not necessary to keep the
right to exploit the design; and
- You can register many variants of one design in order to make
your design protection as wide as possible.
How to exploit your designs?
Adding design features to a product is an increasingly popular
way of giving it a competitive edge by making it distinctive and
attractive to customers. A fabulous design can turn a product into
a brand. Without its sleek design, Apple's iPod would just be
another MP3 player, Pfizer's light blue diamond shaped pill is
instantly recognised as Viagra, and Alessi kitchen gadgets are sold
primarily on the basis of their attractive designs. So how can
these design features make money for your business?
• Designs can make a product into a brand desired by
customers and hence increase and consolidate market share.
• Licensing design rights can provide a valuable income
stream.
• Designs can be used as a way of raising capital, for
example, as security for a loan.
• The rights to exploit a design can be sold.
• A reputation for innovative product design can add
significant value to your business.
Our services
Pinsent Masons has a dedicated Trade Marks & Designs Team
which consists of qualified Design Attorneys. We can file and
prosecute design applications across the globe. Find out more about
our trade marks and designs services.
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