When it comes to design protection, there are different rights - all of which can be used to protect different aspects of a design. In this podcast, John Coldham discusses practical considerations in getting a 'design for life' and what you can do with it once you have it.

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Transcript

Hello, I'm John Coldham, and I'm here to introduce you to designs. This is not intended to be a detailed analysis of the law, but instead to provide you with an overview of what designs can protect - there is a jumble of different rights all of which can be used to protect different aspects of a design - and an idea of what you can do with them once you have them. We will also look at various practical considerations along the way.

Designs have historically been seen as the poor relation of other IP rights - with most IP specialists describing themselves either as a patent or a trade mark lawyer. And this was hardly surprising; there was only ever one or two cases on designs per year, and it didn't seem to be of much interest to clients. The cases we advised on were focused on the designs of reasonably expensive consumer products, such as household appliances. Otherwise, the disputes weren't really worth running as their cost would quickly outweigh the value of the claim.

However, things have changed dramatically, particularly in two respects. First, people are starting to appreciate the breadth of what designs can cover, and secondly there are new opportunities to enforce designs cost-effectively, in ways that did not previously exist.

We have produced a free guide for designers covering the various legal considerations that you should think about when you design something to ensure you're not ripped off as soon as it's successful, which can be found on our dedicated web page at gowlingwlg.com/designsforlife. The page also contains details of our annual involvement with the London Design Festival, including podcasts from leading designers and other materials that we hope you find useful.

This podcast is part of a series, introducing you to a full range of IP rights.

An overview of designs

There are two principal categories of design that protect you in the UK - registered, and unregistered. The registered ones last longer, are more certain (in that you have a certificate) and tend to lead to fewer questions from potential infringers. The unregistered ones are free (as there is no registration), can sometimes be easier to enforce (in the right circumstances), and are more flexible. Within those two broad headings, however, there are UK and European versions. On registered designs, the difference is mainly the geographic scope and corresponding fee levels, but for unregistered designs they are really quite different rights that cover different things.

You could have a product that has all of these different design rights in it - registered and unregistered, UK and European.

The first thing to say about registered designs is that they are, in comparison to other IP rights, very cheap to register. Official fees for UK registered designs now work out at just over £2 per design when you file a number on the same day (and only £50 if you file just one). Community designs are only €350 (with significant reductions for multiple designs too), and cover the whole of the EU. Renewal fees, which kick in after the first five years, are on top but you can decide before the first renewal whether the product is worthy of the additional investment for longer term protection.

Registered designs cover the shape, colour, material choice, and so on of a product. The registered design for a particular product is defined only by the details shown on the images on the register. To be registered, they have to be new, and have individual character, meaning that they are sufficiently different to what went before to be worthy of protection.

If you then find another design on the market after the date of your design registration that does not create a different overall impression to the registered design, you can take action to ensure it's removed from the market. It is important to note that you do not need to prove that there has been any copying when you allege registered design infringement, unlike for unregistered designs.

If you are successful in proving infringement, you are likely to obtain an injunction (which could cover the whole of the EU) and damages for any past infringement.

Community (i.e. EU) unregistered designs offer similar protection to registered designs - i.e. they cover the shape, colour, surface decoration and materials of the design, but they only last for three, instead of 25, years. Although they are automatic - you either have them or you don't - you only get them in certain circumstances. For Community unregistered designs, you get the protection if you first launch a product to the design within the territory of the EU. So if you first launch it in the US, then take it over to Europe, you cannot get the protection. And if someone else (a manufacturer, for instance) first shows the product publicly in China, then you still cannot get EU protection. However, provided they clear this hurdle, people based anywhere in the world can qualify for the protection.

UK unregistered design is a very different thing. It is limited to shape and configuration. Although the latter can be helpful in certain situations, the best way to think about UK unregistered designs is to think about them being for shape only - the decoration on them, the materials used (for example, whether made of glass or something opaque), and so on are to be ignored. This actually makes UK unregistered designs broader - they cover situations where the infringing product may have quite a few differences but still be infringing. Only certain people qualify for UK unregistered designs. The rules are complicated, but if you are a designer working in the EU either for yourself or for a company that has a substantial base in the EU then you are likely to qualify. Designers from other major economies, such as the US, China, Japan and so on, do not qualify and so the design right does not even come into being if they were the designer. There are still some ways round it, including the location of first marketing of the product, so even in those circumstances I'd recommend getting advice, however. UK unregistered designs last for the lesser of 15 years from the date of the design, or 10 years from the date of first marketing, but for the final five years of protection you have to grant a licence if asked (for a fee).

For both types of unregistered design, the case against the alleged infringer will only be successful if you can prove that they have copied your product. If they haven't, then you cannot win. In many cases, that is very straightforward, or the similarities are so great that it is for the person responsible for the accused product has to prove that it did not copy.

Practical considerations

If you remember one thing from this podcast, it is that the key to the successful protection of designs is to ensure you have decent records of your design process. This includes the date of the design, the identity of all those who were involved in the design process, and the details of what was new over and above earlier designs, and so on. When recording who was involved in the process, it would be useful to record whether they were employees and, if so, of which company, and if they were not employees then what their nationality is and where they are based. These are all things that you will need should you later wish to rely on unregistered design rights, and it is perhaps surprising how few companies - big and small - keep accurate records of such straightforward information. To piece it together in the moment of trying to pursue an infringer is much more complicated, and costly.

If you then decide to register your designs, we recommend seeking advice from a specialist. Design filing is not a service that we provide ourselves, but we work closely with experts in this area and can put you in touch if you would like us to do so.

When filing designs, consider filing several designs for a single product, particularly if it is a key one for you, covering different parts of the product, or different levels of detail. Remember that they do not all even need to reflect your actual product - you could register some design variations as well to broaden your protection. The more designs you file at once, the lower the marginal fees for doing so - as I said earlier, design fees for UK designs can cost as little as £2 each.

Enforcement

Once you have your design, and someone has strayed too close to it, there are a number of strategies that you can deploy to stop them. This will depend on the circumstances and there is no one right answer. It is another good time to seek specialist advice - as often a well-thought through enforcement strategy can cost a lot less than an unplanned knee-jerk approach. Just as designs are tricky to file well, there are also few lawyers who litigate them regularly. Done right, designs can be an extremely useful tool to prevent people from taking advantage of your designs and investment.

It does not have to be an expensive rush to court, either; registered designs are particularly effective at nipping disputes in the bud early, but well-documented and evidenced unregistered designs cases are also often resolved quickly. If court proceedings are needed, there are now a number of options available - from the lower cost Intellectual Property Enterprise Court, to the new low-cost Shorter Trials Scheme of the High Court for higher value disputes. Both of these options are perfect for designs disputes and we have seen a real reduction in the cost of pursuing designs claims. And even if court proceedings are started, most cases settle at a very early stage.

Other exploitation

A final point to note is that designs can be very useful revenue raisers - if you do not want to manufacture your design yourself, you can license a third party to do so and charge a royalty. This is much easier to achieve with registered rights, as there is a tangible document that forms part of the licence agreement, and helps clarify precisely what is, and is not, included in any deal.

As I said at the start, for much more information about designs, from inception to manufacture to exploitation, please visit our dedicated web page at gowlingwlg.com/designsforlife. From that page, you can download our booklet on the whole lifecycle of designs and how to make the most of your creativity, or you can drop us a line and we'll send you a free hard copy. The page also contains details of our annual event at the London Design Festival, and podcasts from leading designers who have participated in previous years.

Thank you for listening.