From a legal perspective, the lifecycle of a design following its creation can be divided into three closely related and equally important phases:
- protecting the design;
- exploiting the design; and
- enforcing the design against infringements.
In each phase, it is critical for the design owner to work closely with its legal advisor to ensure that there is a co-ordinated and consistent strategy in place from the start.
In this article, we will look at the UK as an example but the principles are the same in all jursidictions.
1. Protecting the design
Once a design has been conceived, the designer should turn their attention to the most appropriate means for protecting that design without delay, and in any event before the design is disclosed to the public.
All too often, designers neglect this fundamental step in a rush to get the design to market, only to realise, too late, that the design is inadequately protected. One factor in this unfortunate tendency to overlook the design protection may be the perception that obtaining design protection in the UK will be complex and time-consuming.
At first glance, this does appear to be the case. Designs can be protected in the UK by a patchwork of interlocking and overlapping regimes, each with its own set of rules for registrability, excluded matter, term, territory, validity and infringement. However, this apparent complexity also offers a great deal of flexibility by allowing designers to pick and choose the most appropriate and cost-effective means to protect their designs, depending on their particular commercial circumstances.
In simple terms, designs can be protected in the UK by one of more of the following rights:
- registered or unregistered Community designs (under Regulation 6/2002);
- registered or unregistered national designs (under the Registered Designs
Act 1949 and the Copyright, Designs and Patents Act 1988 respectively); and
- copyright as artistic works (under the Copyright, Designs and Patents Act
1 Amended by Enterprise and Regulatory Reform Act 2013
The table above set outs a high level overview of the key characteristics of each regime.
The decision as to which of these rights is the most suitable means for protecting a given design will
depend on a number of factors, including:
- the territory in which protection is required. This will of course be determined by the current and anticipated geographical scope of the designer’s commercial operations. Should it be anticipated that equivalent protection is also desirable outside of the EU, such protection should generally be sought at the same time as protection in the EU (so as to avoid disclosure in the EU being novelty-destroying to applications elsewhere).
- the duration of protection required. In fast moving sectors, such as fashion and electronics, designs may have only a relatively short useful life span and hence a relatively short period of protection, such as the 3 years offered by the unregistered Community right, may suffice; and
- the value of the design to the designer. Whilst it is of course cheaper and easier to rely on unregistered rights alone to protect a given design, the protection afforded by unregistered rights is less robust because such rights are shorter in duration and require proof of copying. Furthermore, the deterrent effect of possessing a formal registration cannot be underestimated. Depending on the commercial importance of the design, the designer may wish to seek registered rights, notwithstanding that the design may also be protected by unregistered rights.
It should be noted that the registered Community design in particular is becoming increasingly widely used for a number of reasons. Firstly, it is a single, unitary right, enforceable throughout the all 28 EU Member States. Secondly, it is cheap and easy to obtain (OHIM does not substantively examine in a matter of weeks). Thirdly, it subsists for a maximum of 25 years, often longer than the useful lifecycle of a given design. Fourthly, the Community design regime provides for a grace period of 12 months (allowing the design to be ‘tested’ on the market before deciding whether it is worth registering) and a deferral of publication of up to 30 months (allowing the designer to establish a filing date, but take more time to develop the product before publicly disclosing it). In light of these advantages, it is perhaps unsurprising that over 750,000 Community designs have been registered at OHIM to date, with approximately 80,000 new designs being added every year.
If however the designer is seeking to rely on their unregistered rights alone (as may well be appropriate in certain cases), it is critical that they are able to evidence how, when and by whom the design was created, so as to be able to establish title to the design should it become necessary for enforcement purposes. Detailed written records of the design process should be maintained as standard practice, together with details of the employment and commission agreements of all those who contributed to the design.
2. Exploiting the design
Once the designer has determined their best strategy for protecting their designs, they will then wish to commercialise the design to exploit its value. Typically, this exploitation will simply be by the sale of products incorporating the protected design. However, just as with any other intellectual property right, designs (whether registered or unregistered) may also be licensed to third parties for exploitation and the normal considerations for such licensing arrangements will apply. Any exploratory discussions with third parties to this end should be expressly subject to a non-disclosure agreement.
3. Enforcing the design against infringements
The more commercially successful the design proves to be, the more likely it is that competitors may seek to mimic it for their own products. This tendency to copy successful designs is exacerbated by two factors in particular.
Firstly, the public’s understanding of design law (and more particularly the concept that a design per se can be legally protected) is poor. Whilst everyone can be expected to know that, say, a counterfeit Rolex is unlawful, the same cannot be said for products which merely look like a famous product but not branded as such. The upshot is that many parties dealing in these ‘knock off’ products, either manufacturing them or putting them on the market, are often genuinely unaware that they might are infringing the designer’s IP rights.
Secondly, a large proportion of these knock-off goods originate from the Far East, where design owners inevitably struggle to prevent the bulk manufacture of knock-off products, which then inevitably find their way to the UK market.
It is therefore extremely important for designers to have a co-ordinated and rigorous enforcement policy in place to take action against knock offs products quickly and efficiently.
(a) Court action against infringers
Prior to initiating court action, the design owner will typically wish to issue a cease and desist letter to potential infringers in an attempt to avoid the need for further action. Care must be taken when issuing cease and desist letters as such letters are likely to constitute an actionable threat to bring infringement proceedings. It is therefore important that the design owner is confident of its rights before taking such a step.
In the event that a cease and desist letter fails to achieve its objective, a designer may wish to bring an infringement action against a third party to obtain an injunction (which can be pan-European, if based on a Community design) to prevent further sale of the infringing product, as well as damages and/or an account of profits and ordered publication of the judgment. Interim injunctive relief is also available, with a decision typically issued in 6 – 8 weeks.
There has long been the concern that enforcing designs against infringers before the courts will be both costly and unpredictable in practice. However, in light of the recent spate of high profile design cases across the EU (such as the Apple v Samsung battles), courts throughout many EU member states are becoming increasingly comfortable with design law and now offer effective fora for disputes to be confidently resolved.
In the UK, infringement proceedings can be brought either in the High Court or the Patents County Court (the PCC, shortly to be renamed the Intellectual Property Enterprise Court). Whilst High Court proceedings remain relatively expensive, the PCC now offers an effective and relatively low cost forum for the resolution of lower value design cases, especially those involving SMEs or individuals. The PCC is staffed by a specialist judge and employs a more streamlined procedure to deal with, for example, disclosure of documents and crossexamination.
Costs are limited such that the losing party will be liable for a maximum of £50,000 (based on a “scale costs” regime) and recoverable damages are limited at £500,000.
A decision from the PCC can be expected within a year of proceedings being commenced.
(b) Customs enforcement
Under the EC Customs Regulation 1383/2003 (to be replaced by Regulation 608/2013 in 2014), the owner of a design right may apply to the Customs authority in one or more EU Member States requesting that Customs searches for and seizes suspected infringing products entering or exiting the EU. Whilst the practice varies from country to country, in general, if suspected goods are detained and the importer/exporter is unwilling to surrender the goods for destruction, Customs will continue the detention pending the outcome of infringement proceedings.
A Customs enforcement programme is an extremely effective means of prevent infringing goods from entering circulation in the EU. Whilst there is no fee payable for making the application to Customs, enforcement action must usually be taken soon after a detention is made and so the design owner should have resources in place to effect this.
(c) Other means of enforcement
Other means of monitoring for design infringements, such as attending the relevant trade fairs and monitoring online auction websites should also be considered as part of a comprehensive enforcement effort.
This article is part of the DesignWrites Newsletter for October 2013.
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