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Design Rights – Do You Have A Game Plan?

Design Rights – Do You Have A Game Plan?

Megan Briggs

“Fail to prepare and prepare to fail” is one of the annoying phrases that has continually been used by coaches and even my parents when I am preparing for any golf competition. Whilst the phrase may be a cliché it is also true (as are most things my parents say) and can be applied to many situations including protecting your intellectual property. With that being said Design Rights are a relative rookie on the intellectual property tour quietly building their reputation and becoming more well-known on the IP roster, compared with their veteran counterparts such as patents, copyright and trade marks. Now with big players waking up to the abilities of Design Rights and the protection they offer it appears an appropriate time to discuss the tactics involved in Design Right protection and your strategy should they be infringed. 
In both the UK and EU, designs can be protected by unregistered or registered methods. These methods pose both offensive and defensive options, allowing you to attack an opponent who is encroaching on your design, and to defend your position and product by providing you with a safeguard. But which method should you rely on and what do they mean?
In essence, design rights protect the look of your product, rather than the idea, whether the product is in its manufactured form in the case of unregistered designs or the line drawing or image you have included in your design registration. 
Some background
Unregistered Designs 
Unregistered design right protection arises automatically in the UK when the design is created and lasts for a period of either 10 or 15 years depending on the circumstances. On the other hand, in the EU the protection begins when the design is first made available to the public and lasts for a period of 3 years.  Both unregistered design options provide a different scope of protection, with the UK protecting the shape and configuration of the product, excluding surface decoration and the EU protecting the appearance of the whole or part of the product in particular the lines, contours, colours  etc. 
Registered Designs
Design owners also have the option of formally registering the design in the UK at the Intellectual Property Office or in the EU at the Office for Harmonization in the Internal Market. 
A registered design gives the owner a monopoly on the design, meaning that third parties are not able to produce products or goods which include the registered design, regardless of whether or not they knew of the registered design. Both UK and EU registered designs last for 25 years but must be renewed every 5 years and protect the overall appearance of the whole or part of the design as filed. 
Someone is infringing my design!
Unfortunately, regardless of how much work and money you put into building your brand and protecting the design of your product, others often cannot help themselves from copying or incorporating your design into their product. What is it they say “imitation is the sincerest form of flattery”, if only that were true. So what now?
In order for unregistered design rights to be infringed, you must be able to prove that the third party copied your design i.e. that the third party product was not independently designed. This can be difficult to prove, but if your product is being advertised widely in the market and the third party product bears a significant resemblance to yours, these factors will all be in your favour. 
On the other hand, with a registered design you have to rely on the design as filed. The test for registered design right infringement at both EU and UK level is one which involves what is known as the “informed user”. The informed user is arguably the referee, someone who knows your products market, understands the other products available but does not have any allegiances and is there to ensure fair play and no cheating. The question therefore to ask is – “does the third party product create a different overall impression on the informed user?” Simplistically, if the answer is yes then your registered design right has not been infringed but if the answer is no then it has. 
Tactics 
Whilst raising a court action for design infringement is an option for the rights holder, the cost of doing so can sometimes be a barrier. 
There are of course alternative methods of enforcing your design rights, such as mediation. The Intellectual Property Office is also currently consulting on its Design Opinion Service which will allow rights’ holders to request an opinion in relation to its UK and/or Community unregistered or registered designs and in particular, if they are being infringed or whether such designs are valid. These opinions will be non-binding but may help to inform the rights’ holders to decide whether or not to take further steps to enforce its rights.
Attack, the best form of defence
With a fast moving market and developments in technology, simply registering your intellectual property or being aware of your unregistered rights is unlikely to be enough. If you want to build your brand and expand your product, you have to be prepared to enforce your rights to show your opponents that you intend to compete and win.  It is important that you think about what territories you are registering your IP in and what IP you are registering. Spend your time and money wisely on registered IP if it is worthwhile and be prepared to enforce it if necessary. 
Nobody wants to see their team’s best players being poached by the competition.  
Megan Briggs
Solicitor

“Fail to prepare and prepare to fail” is one of the annoying phrases that has continually been used by coaches and even my parents when I am preparing for any golf competition. Whilst the phrase may be a cliché it is also true (as are most things my parents say) and can be applied to many situations including protecting your intellectual property. With that being said Design Rights are a relative rookie on the intellectual property tour quietly building their reputation and becoming more well-known on the IP roster, compared with their veteran counterparts such as patents, copyright and trade marks. Now with big players waking up to the abilities of Design Rights and the protection they offer it appears an appropriate time to discuss the tactics involved in Design Right protection and your strategy should they be infringed. 

In both the UK and EU, designs can be protected by unregistered or registered methods. These methods pose both offensive and defensive options, allowing you to attack an opponent who is encroaching on your design, and to defend your position and product by providing you with a safeguard. But which method should you rely on and what do they mean?

In essence, design rights protect the look of your product, rather than the idea, whether the product is in its manufactured form in the case of unregistered designs or the line drawing or image you have included in your design registration. 

Some background

Unregistered Designs 

Unregistered design right protection arises automatically in the UK when the design is created and lasts for a period of either 10 or 15 years depending on the circumstances. On the other hand, in the EU the protection begins when the design is first made available to the public and lasts for a period of 3 years.  Both unregistered design options provide a different scope of protection, with the UK protecting the shape and configuration of the product, excluding surface decoration and the EU protecting the appearance of the whole or part of the product in particular the lines, contours, colours  etc. 

Registered Designs

Design owners also have the option of formally registering the design in the UK at the Intellectual Property Office or in the EU at the Office for Harmonization in the Internal Market.

A registered design gives the owner a monopoly on the design, meaning that third parties are not able to produce products or goods which include the registered design, regardless of whether or not they knew of the registered design. Both UK and EU registered designs last for 25 years but must be renewed every 5 years and protect the overall appearance of the whole or part of the design as filed. 

Someone is infringing my design!

Unfortunately, regardless of how much work and money you put into building your brand and protecting the design of your product, others often cannot help themselves from copying or incorporating your design into their product. What is it they say “imitation is the sincerest form of flattery”, if only that were true. So what now?

In order for unregistered design rights to be infringed, you must be able to prove that the third party copied your design i.e. that the third party product was not independently designed. This can be difficult to prove, but if your product is being advertised widely in the market and the third party product bears a significant resemblance to yours, these factors will all be in your favour. 
On the other hand, with a registered design you have to rely on the design as filed. The test for registered design right infringement at both EU and UK level is one which involves what is known as the “informed user”. The informed user is arguably the referee, someone who knows your products market, understands the other products available but does not have any allegiances and is there to ensure fair play and no cheating. The question therefore to ask is – “does the third party product create a different overall impression on the informed user?” Simplistically, if the answer is yes then your registered design right has not been infringed but if the answer is no then it has. 

Tactics 

Whilst raising a court action for design infringement is an option for the rights holder, the cost of doing so can sometimes be a barrier. 

There are of course alternative methods of enforcing your design rights, such as mediation. The Intellectual Property Office is also currently consulting on its Design Opinion Service which will allow rights’ holders to request an opinion in relation to its UK and/or Community unregistered or registered designs and in particular, if they are being infringed or whether such designs are valid. These opinions will be non-binding but may help to inform the rights’ holders to decide whether or not to take further steps to enforce its rights.

Attack, the best form of defence

With a fast moving market and developments in technology, simply registering your intellectual property or being aware of your unregistered rights is unlikely to be enough. If you want to build your brand and expand your product, you have to be prepared to enforce your rights to show your opponents that you intend to compete and win.  It is important that you think about what territories you are registering your IP in and what IP you are registering. Spend your time and money wisely on registered IP if it is worthwhile and be prepared to enforce it if necessary. 

Nobody wants to see their team’s best players being poached by the competition.  

Megan Briggs

Solicitor

LChalmers