Demystifying design protection

June 22, 2013

1 June 2013, London

In an increasingly image-conscious world, where the key and sometimes only differentiator between competing products is their appearance, organisations are now beginning to fully appreciate the fundamental role that design protection has to play in the success of their products and services.

Designs are often regarded, both by their IP owners and their lawyers, as being the least important of the four pillars of IP protection, lagging behind trade marks, patents and copyright in terms of utility and business impact. Whilst this reputation is undeserved, in some respects, it is understandable.

Perhaps the most obvious culprit is that the legal protection afforded to designs comprises a patchwork of interlocking and overlapping regimes, each with its own rules for registrability, excluded matter, term, territory, validity and infringement. In the UK alone, there are up to seven regimes that are potentially capable of protecting designs: the registered and unregistered Community right, UK national registered and unregistered right, copyright, passing off and even the trade mark regime for 3D marks. In other EU countries, unfair competition and slavish imitation may also be added to this list. With so many rights in play, is it any wonder that protecting designs is regarded as an off-putting and confusing process?

This perception of the regime for protecting designs has had two consequences. Firstly, many designers naturally assume that creating an effective design portfolio will be an expensive and time consuming task. Secondly, they also assume that enforcing designs against infringers will be difficult or unpredictable in practice.

Both are wide of the mark. The tide has begun to turn, thanks largely to the coming of age of the highly successful Community design regime, now in its 10th year. To date, almost 700,000 registered Community designs have been filed and designers are starting to wake up to the enormous value of a fully registered, pan-European right, available cheaply and in a matter of weeks, without any substantive examination required. Building an effective pan-EU design portfolio has never been quicker or easier.

Beyond the registered Community right, the other regimes that exist to protect designs offer enormous flexibility by allowing designers to tailor their protection to their own commercial needs. For instance, if the valuable life of a design is only brief, it may be that the unregistered regime (whether Community or national) will offer sufficient protection.

Well advised designers are also starting to appreciate that the inherent flexibility in the various regimes affords great opportunity in terms of the type of works that can be protected. Designers are now looking beyond simply protecting the shape of their products, and are protecting other design elements such as logos, fonts, stylised words, computer graphics, GUIs, icons and moving images, traditionally the domain of trade mark and copyright protection only.

In light of the recent spate of high profile design cases (such as the long-running Apple v Samsung battles), courts throughout many EU Member States are becoming increasingly comfortable with design law and now offer effective fora for design disputes to be confidently resolved.

The revolution in design law has well and truly begun.

Originally published in DesignWrites 1st Edition.