Designs for Life: Don't let the lights go out

INTRODUCTION

Designs are key assets for many businesses. Whether you have a design for an exciting new water rowing machine, an innovative pair of jeans, or perhaps an imaginative new vacuum cleaner, developing a strategy, clearing use, obtaining registration, and ensuring their effective protection, exploitation and enforcement are vital to its success.

No brand or design exists in a vacuum, however. Where and how are the legal lines drawn between being inspired and simply copying? And, at what point does fair use of an idea or product cross into design plagiarism?

Once made public, a spark of original design creativity can quickly ignite a series of imitations, whether intentional or not. How then can designers keep the spotlight on their original concepts to protect their intellectual property from infringement? And, how can businesses ensure that imitation products cannot dim the glow on their innovation?

To guide and support you and your business in capturing the challenges and opportunities of designs and brand management, Gowling WLG's team of internationally renowned, award-winning Trademarks, Brands and Designs professionals has produced a series of essential and practical guides.

We can guide you through the legalities to ensure that you remain ahead of the competition and the copycats. The guide journeys through the process of design, from inception to exploitation and enforcement, exploring the steps from the point of view of the designer and design-led business.

Don't let the lights go out – find out how to protect your designs for life.

HOW TO PROTECT A DESIGN IDEA

Eureka! You've come up with an original and innovative idea. But before you can start selling your invention, or telling people about it, you must first do one thing – protect it.

Legal protection for design is of vital importance to any business which designs new products. It helps you to protect this work from competitors and third parties while minimising the risk of (accidentally or not) infringing someone else's design.

Understanding design law, and its impact on the design process, is therefore crucial from the outset.

Design protection can be a complicated area – designers have access to a number of (often overlapping) forms of protection – but it doesn't have to be expensive. If you are looking to know more about copyright and trademarks and how they affect designs, our first guide takes you through the different types of rights that may protect your design.

DESIGN PROCESS

Each designer will have their own design process, but we consider there to be six key steps a business needs to follow so it can manage its design process in order to protect its investment and minimise its risk:

  1. Get contracts with designers in place, particularly to protect ownership and confidentiality;
  2. Ensure no-one else has already created your design;
  3. Ensure you have documentation and awareness of origins of the design;
  4. Consider registration – you may decide to seek enhanced protection by registering the design. This decision will hinge on many variables; you can learn more about these in our "Registration" guide;
  5. Include notices when you publicise your design to make people aware of your protection; and
  6. Store all records and notes made in respect of the design.

To fully understand each of these steps, why they are important (and some of them are very simple) and more, please read our "Design Process" guide.

HOW DO YOU TURN AN IDEA INTO A PRODUCT?

So your idea is now protected. Now what? You want to capitalise on your invention by creating and securing a marketable product. So, how do you go about turning a design idea into a product?

Bringing a design to market can be a difficult and lengthy process, and design law can also be hard to follow. But when understood properly, it can help make the journey to the marketplace smoother and more profitable.

Innovation is no easy process. Unless you have a clear plan and good preparation, understand the potential pitfalls, and have robust legal advice, bringing a product into reality can be tricky.

Arguably the most important step in bringing a design to market is choosing the right manufacturer. Your potential candidates must have the capacity to make the product, and be able to do so at the right price. They will also potentially be involved with, or at least have access to, the most intimate details of the product's design process.

With an agreement in place, you'll then need to consider distribution. Similar considerations as with manufacturers come in to play when selecting distributors for a design. Again, your distributor may require a licence to the design, so think carefully what type of licence should be given.

Finally, once the manufacturer(s) and distributor(s) are lined up, and the design is ready to go to market, the next step to consider (if this has not been done already) is how to go about protecting it, as we've covered above.

Find out more about these three key steps and other considerations you should take into account when bringing your idea to market in our guide: "Bringing the design to market".

HOW TO MAXIMISE RETURN ON INVESTMENT

You've followed all of the above steps and now your product is on the market – phew! But how can it continue to earn its keep and generate profit?

Given the important role they play in preventing copying, it is very easy to view design rights as having a purely protective function. However, legal proceedings regarding design rights are relatively rare. They are, in fact, more likely to be licensed than litigated, so designs play an important role in generating income. Indeed, an effective licensing strategy can more than reimburse your original costs in filing the design.

Most of the considerations for licensing design rights apply equally to licensing other intellectual property rights. The designer's approach will vary according to their specific circumstances and the design(s) in question. Nevertheless, your licensing strategy should take at least the following into account:

  • Why the design is being licensed;
  • What is being licensed;
  • Where the design is being licensed; and
  • The terms on which the designs should be licensed.

Read our guide which explains these, and highlights some of the real life challenges faced by design rights, the implications for your design when its design protection expires and subsequent alternative ways to protect it.

HOW CAN YOU ENFORCE YOUR RIGHTS?

Congratulations! Your product is starting to enjoy success. However, you are starting to see replica and copycat products in the market. To ensure effective value of the protection, you may need to enforce.

Design law can give monopoly rights over how a design looks and can be a powerful tool to stop would-be copycats.

With copycat products, as a first step you might consider sending a 'cease and desist' letter. If you have strong protection, our experience is that many design cases are amicably resolved following this, but sometimes court action becomes unavoidable and it may be necessary to sue an infringer. If so, you will need to first consider:

  • Which rights to sue under; and
  • Where to sue. Our "Enforcement" guide provides a tabular summary of the different options available.

You have other enforcement options:

  • You could try and prevent the products entering the country via a customs notice;
  • A number of copycat products are sold on online marketplaces, making online takedowns a useful tool, although there are dangers to using these without advice; or
  • As an alternative to litigation, you may consider alternative dispute resolution (e.g. mediation or arbitration).