Changes to the law on the protection of designs in recent years have raised the status of what used to be the Cinderella of intellectual property rights. The introduction of a design registration system for the whole European Community (as with trade marks), protecting even designs with no eye-appeal, was a dramatic change. The associated changes to domestic law, ensuring that the rules in each Member State are much the same as those for the Community system, have also been far-reaching: the law’s requirement for eye-appeal was difficult to cope with.
The Community system also offers a brief period of unregistered protection, particularly attractive to makers of fashion items for which lengthy and expensive registered protection is not apt. Surprisingly, a couple of clients have had unregistered design right problems in the last few weeks, and while that is far from being a valid sample it does indicate a growing interest in the protection given by this area of law. The Community law requires that a design be new and have individual character, both criteria being tested world-wide. Only very obscure existing designs, unknown to the ‘circles specialised in the sector concerned’ in the European Community, will not be deemed to form part of the prior art. The sector concerned, it seems, is where the ‘prior art’ is to be found – not necessarily the sector in which the design is intended to be used. In the recent case of Green Lane Products v PMS International a design for a massage ball could count against the novelty of laundry ball (a device to place in a tumble dryer to soften fabrics).
The novelty test is a stern one, but for a business producing new designs it is clear that it does a useful job. If you don’t register your design, the long-stop unregistered Community design right, though less potent (it protects only against copying, and for a mere three years) can be very handy.
If you rely on designs that have been around for a while, the UK’s homegrown unregistered design right might be what you need. Again, it protects only against copying but the entry requirement is originality, not novelty, so a greater range of designs will be protected. Moreover, it lasts for ten years from when articles made to the design were first placed on the market.
Many designers work by adapting – even by adopting – the work of earlier designers, and when the criterion for protection is novelty, ‘retro’ elements in designs can create problems. The law rightly rewards creative effort, which is manifest in new or original work: if designers find old designs attractive, those old designs have to be free for all to use. But for others producing designs for articles or products, whether there is obvious eye-appeal or not, the law on designs offers potentially valuable protection.
And it is not only designers of articles who can use the new law to their advantage. Many trade mark owners have extended their protection by registering as designs logos that they commonly apply to the surface of articles – for example, shirts. Unless a fairly fundamental redesign has taken place, only a brand-new logo would be protectable in this way – but registration would give formidable protection, free from many of the uncertainties that surround trade mark protection.
If you need advice on how designs, including logos, might be protected under design laws we would be delighted to help, and if appropriate to deal with applications for registration.