Ford GT. Aston Martin DB5. Porsche 911. Iconic car designs stick long in the memory. For automotive manufacturers, design is one of the most crucial elements of success. Here, design expert Alan Jones explains what can be done to protect innovative designs from being copied — ensuring a bright and creative future for the automotive industry.
Critical to commercial success
It goes without saying that design is a critical element of a car’s commercial success — its appearance, shape, lines, contours and colour are the first things we notice, long before we sit inside or drive it. This has never been more true than in today’s digital age, when the majority of purchasing decisions are made online. Buying a car is often an emotional decision and we make assumptions about performance, quality, feel and even cost based on looks alone.
Importantly, design is also how we distinguish between different cars — manufacturers use design to differentiate their brands, enabling their vehicles to stand out in a crowded market. Good automotive design embodies and connects a brand promise to a customer experience, and the use of strong design language enables consumers to identify and link the origin of a range of models based on their appearance.
Automotive design is constantly evolving to meet consumer demand and keep pace with competitors. Its importance and impact is likely to increase as industry developments like electrification and the move to autonomous driving technology radically change the layout and function of cars — for example, autonomous driving will remove the requirement for drivers’ seats, steering wheels, dashboards and potentially even windows.
Protecting your investment
Designing a new vehicle is a costly and time-consuming business. If a design or important elements of a design are appropriated by other manufacturers, your investment (and any competitive edge it brought) will be lost.
Recently, Jaguar Land Rover (JLR) was forced to take action in China against Jiangling Holding’s Land Wind X7, which copied the design of the Range Rover Evoque. Despite JLR’s reputation for build quality, performance and reliability, consumers were willing to opt for the Land Wind X7 based on its similar looks, despite it being a cheap replica. As automotive design evolves, the importance of protecting new designs from copying increases.
Here’s what can you do to protect your investment in design, prevent unauthorised use by your competitors, and maintain brand differentiation.
A registered design protects the appearance of a product — which may consist of its lines, contours and shape, colours and patterns, and texture and/or ornamentation. Compared to patent protection, which is used to protect the way a product works, design protection is very quick and relatively cheap to obtain. An application for design protection comprises a series of images representing the design for which protection is required, and official fees are relatively low.
Design registrations are territorial and must be obtained on a country-by-country basis. An EU wide ‘Community Design’ is available that provides monopoly protection for a design for up to 25 years.
How long does it take?
Design applications are processed quickly, with Community designs being registered in just a few days, mainly due to the lack of any formal examination procedure. Often, this can enable immediate infringement action to be taken while patent rights remain pending, and design registrations are often filed together with patents as part of a wider protection strategy.
Securing a suite of rights
While a design registration sounds straightforward, the protection it provides is defined by the drawings submitted. In order to infringe the design, a product must look substantively the same as those drawings. If the design registration isn’t prepared properly, relatively small but potentially significant changes to the design could be all that it takes to get around your rights.
For example, you may consider the shape of your new car to be its most defining feature. However, if you file a design registration for your new car that includes additional exterior features such as the shape and location of the headlight array, radiator grille, wing mirrors and door handles, the scope of the registration becomes very narrow. As a result, a competitor may copy the general shape of your car, but by changing the appearance of the other external features included in the registration they may be able to avoid infringement. A broader registration covering the shape of the car, without limitation to the other features, could have avoided this.
In order to achieve robust protection that can’t be easily avoided, it’s important that the design application is very carefully considered. Our design attorneys work closely with designers to identify the commercially important elements of your design and devise a filing strategy to ensure that these features are comprehensively protected.
For example, in the design registration for the Acura CDX, Honda sought to protect the body shape of the vehicle. Therefore, the body shape was represented with solid lines, while much of the remaining detail such as the wheels, wing mirrors and door handles are represented in dashed lines. These dashed-out features don’t form part of the protected design and as a result, a competitor seeking to reproduce the body shape can’t avoid the design registration by changing ancillary features.
Additional applications may be filed simultaneously to protect further aspects of the design, forming part of a suite of rights to ring-fence the design as far as necessary. Manufacturers regularly file design applications covering features such as vehicle headlight and/or taillight clusters, windscreens, dashboards and wing mirrors.
Is there anything I can’t protect?
Design protection is only available for parts of a vehicle that are visible in ‘normal use’ — so generally excludes any parts that aren’t visible or are only visible during maintenance or repair. Certain interior features, such as seats and console displays, can be protected.
UK and EU design regulations also state that if a feature must be a particular shape to perform its function, and there is no other shape possible, it can’t be protected. This is known as the ‘must match’ exclusion. One example would be the head of a spanner, which must fit the nut it’s to be applied to — there would be some degree of design freedom in the shape of the handle, which is where manufacturers could focus their design efforts.
Components that form parts of a complex product, such as a car door, can be registered. However, the registration will not be enforceable against the use of the design in repairing the vehicle. The ‘must match’ exclusion means that spare parts must match the rest of the vehicle, and as a result, copy the parts they’re replacing, avoiding design infringement.
However, this only applies if the work is strictly a repair to restore the vehicle to its original appearance, and not an upgrade. For example, Round and Metal (R&M) infringed BMW’s registered design for its alloy wheels because the complete wheel sets sold by R&M were intended to replace the wheels of lower spec models with the wheels designed for higher spec models — and hence were considered upgrades, not like-for-like replacements.