DesignWrites by Bird & Bird: 10th edition

31 May 2017

Ewan Grist

Welcome to the 10th edition of DesignWrites

This is as good a moment as any to reflect on the striking developments and stories in product design law which have taken place since we launched our first edition of DesignWrites back in June 2013 and how these have affected designers and design-heavy organisations.

At an international level, we have seen progressive growth in the signatories to the Hague system for filing international designs, including the US and Japan, with the UK expected to follow suit shortly. With many of the big markets now signed up, the system is a more attractive option for international design filing projects than was previously the case. The Community design regime continues to be an incredibly popular and user friendly system for protecting designs throughout the EU. The registered Community right is extremely quick to obtain (often within 48 hours of application) and relatively inexpensive. The unregistered Community right provides invaluable additional protection to designers, particularly in fast moving industries, such as fashion, where designs are expected to be short lived.

Amongst the many high profile product design cases of recent years, Apple's battle with Samsung over various designs relating to tablet computers stands out. It has unfolded in a number of territories, with the latest chapter being the US Supreme Court's decision on the 'total profit' rule for calculating awards following a finding of infringement (reported on p. 12). In the UK, the long running Trunki case finally reached a conclusion before the Supreme Court, the first time a design case has ever made it that far (reported in our 8th edition). Whilst the outcome disappointed many, it did at least provide some valuable guidance to designers on the importance of selecting the best images for filing.

A shadow has inevitably been cast by Brexit. Upon Brexit, Community designs will cease to have any effect in the UK although there will doubtless be a conversion mechanism allowing existing registered Community designs to be converted into the equivalent UK registered designs. Losing the unregistered Community design in the UK is much more problematic as the unregistered UK right is narrower in scope. It is generally hoped that the UK will introduce a new unregistered right mirroring the outgoing unregistered Community right but it remains to be seen whether this can realistically be achieved before Brexit. In the meantime, registering designs becomes more important than ever before.

We hope you will enjoy this anniversary edition as much as previous ones.

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