- Himanshu Dasare
- Updated: Fri, 25th Nov 2016
Designs are commercially exploitable assets. Design rights can be protected against revenue loss and we tell you how. Alternatively, if you are involved with a design right infringement claim our team will look to dispose of the matter quickly for you.
Our design rights services include:
How to establish design rights
Design rights protect the aesthetic appearance of either the whole or part of a product or surface pattern. Copyright exists in the design. These rights can overlap and cannot be distinguished because a design right can protect a look of a product whereas copyright applies to the paperwork that was generated prior to creating a final design.
Design rights include decorative patterns, graphic symbols, the shape of products and their packaging. Examples include the external look of the building or a shop front, such as the one protected by Apple.
To qualify for design right protection, the overall impression of the new design must be different from any existing design. We deal with the many grey areas that arise. We will provide an independent view based on our knowledge of established case law around the topic. We have found that the court will look at each product and compare the designs visually side by side. If the judge finds that the consumer would not mistake the products for the other they will deem that no infringement has occurred.
Design right vs trade mark
A number of companies are using design rights together with trade marks or sometimes instead of trade marks to protect their logos. The benefit of a design right is that they are enforceable throughout the EU and can be obtained fairly quickly. Unlike the case with a trade mark, there is no substantive examination of the application by the European Union Intellectual Property Office. However, given that there is no official examination with a design right we recommend thorough personal due diligence which we can deal with. Another disadvantage to a design right compared to a trade mark is that the duration of design right protection is considerably shorter than trade marks.
Duration of design rights
Registered design rights both in the UK and EU will give the holder a 25-year monopoly right in the design. This means that the holder can sue for infringement even where the infringer did not copy the registered design. This is because after paying fees for your design application, your design will be published in the design register which is freely available to the public. This is deemed to automatically give members of the public notice that you own the monopoly right over your design. Therefore they cannot copy it without your prior consent. Registered design rights need to be renewed every 5 years.
In the UK, unregistered design rights lasts for ten years from the end of the year of first exploitation. Compare with European Community Unregistered Designs, which last for 3 years from when they were first made available within the European Union. A number of industries such as the jewellery and fashion industry use European community rights as they market and sell their products throughout Europe. This right will allow them to not only bring infringement proceeding in the UK but in other EU member states too.
Design Rights in Mobile Apps, Video Games and Robots
The duration, the quick and cost effective nature of registration and the option of renewal makes design rights attractive to companies seeking to protect new media and digital products such as mobile applications (Apps), video games and robots along with other applications of artificial intelligence.
Use of design rights in Apps:
For mobile applications (apps) whilst copyright will protect the underlying source code of the software application and there is a possibility of a patent, design rights will protect the aesthetic look and feel of the results displayed on the screen of the app or protect the graphic icons that appear on the mobile phones.
Use of design rights with video games:
With video games, design rights are used to protect video game characters. This can help the developer to control and license the use of their characters. If a game is popular, characters can be licensed to a wide number of industries such as the fashion industry.
- For example: if you have designed a game for children with a distinctive character, you can licence your character to a fashion label to use on t-shirts, bags or accessories.
With robot technology that uses artificial intelligence, whilst the algorithms controlling the robots are protected through the use of confidentiality agreements, design rights will protect the visual appearance of the robot.
Design rights, registered designs and copyright
Often, there is an overlap between unregistered design rights, registered design and copyright, in that one or more may be relevant to the same article or design. Where a third party infringes one of the rights they may infringe the other. Where copyright and unregistered design rights are applicable, the law does not allow a party to pursue an action for infringement of both rights. In this case, the UK law states that if an action for copyright infringement is available, an action for design right infringement cannot be brought. Therefore, if both unregistered rights and copyright are available, copyright is the intellectual property right that needs to be relied on
If registered design rights and unregistered design rights apply to a product, infringement action may be taken in respect of either or both rights.
If both copyright and registered design right apply to a product, infringement action may be taken in respect of either or both rights.
Any asset requires looking after. There are some simple steps which can be deployed for design rights which we summarise below.
- In the first instance owners of a design right should mark their goods, any accompanying packaging and documentation, with design right notices, along with the name of the owner and the year of first marketing. If this small step is taken it can:
- Act as a deterrent to potential infringers;
- Assist in establishing the owner’s right to damages on infringement; and
- Assist in establishing that the infringer knew or ought to have known of the protected right Act as a deterrent to potential infringers;
- Registering your designs if possible. This will make it easier to bring infringement proceedings.
We do offer a portfolio management service which includes registration and monitoring of design rights along with trade marks and other intellectual property rights. The service includes:
- Notification of renewal dates – many design right owners forget to register and suffer loss when as a result they cannot stop infringement;
- Scope the web to see if your designs are being infringed – we will compile a list of infringers and suggest the best course of action to stop them using your designs.
Please do speak to us to see how our service can be of value to you.
Licensing design rights
We draft and review design right licences picking out the pitfalls and enhancing revenue opportunities. The design owner can licence their designs to interested third parties through a licence agreement.
Usually licences will deal with:
- Ownership of the intellectual property
- Exclusivity rights
- Royalties or fees
- Restrictions; and
- Consequences upon termination.
We deal with wrapping up multiple rights such as the use of copyright and patents along with the design rights.
In certain industries it is beneficial to create a licensing network. This is where you select a few brands and designs and licence them out under strict terms and conditions.
Another way of gaining income is through the outright sale of your design through an assignment. We do manage the sale of businesses which include an IP.
What can be done to stop infringement
It is easy to copy a design right with modern technology. What takes skill, and is what we do, is work out how to stop the design right infringement. The skill includes solutions which are quick and cost proportionate. Our approach requires:
- Analysis of what the infringement is, and who has infringed. There are different forms of infringement some of which may be more applicable to your case than others.
- Providing the solution on how to stop the infringement.
Forms of design right infringement
Infringement can take many forms. In order to stop infringement you need to pinpoint the type of infringing act. It can consist of:
- Making an article to the design. An example would be if you have produced a design for a new product and someone creates the product using your design.
- Creating a design document for the purpose of enabling the article to be replicated. An example would be if you were a fashion designer who has just designed a new clothing line. If a person looked at your line and made a design document of each piece of clothing, for the purpose of reproducing them and selling them there would be a design right infringement. As long as one of your designs is copied, produced and marketed you can bring a claim for design infringement.
- Importing or dealing with infringed articles. For example if you ship or transport a consignment of toys that have been created by copying someone else’s designs – you have infringed a design right.
We undertake investigations and analysis to identify the nature of the infringing act and the potential infringers.
Stopping design right copying
After identifying the infringement act, we will establish what options are available to you. We will set out the risks, benefits, costs and timescales. Often it makes financial sense to enter into negotiations designed to resolve the infringement dispute. We found that in many cases a stiff letter from a solicitor is sufficient to stop the infringement of a design right and secure damages for infringement. Most of our cases settle well before they reach court. This is beneficial to our client as it minimises their costs and ensures they get the outcome they desire.
If settlement negotiations are not successful, we can bring your claim to court. We are experienced in bringing design right claims particularly in the Intellectual Property Enterprise Court (IPEC).
Defending claims of infringement
We deal defend both registered design rights and for a great number of clients unregistered design rights. If you have been accused of design infringement it is important to act swiftly to minimise cost. We have found that our tried and tested technique has produced favourable results for our clients.
Steps when acting for the defender
- First we identify the type of design that has been infringed – is it registered or unregistered.
- We will then ascertain whether the accuser actually owns the designs. If it is registered we will ask for registration documents and see if duration has lapsed. If it is unregistered, we will look to see when the product was first on sale. If it was over 10 years ago, the owner no longer has design right protection. If your product was marketed and sold before the accuser’s product, then we will defend you on these basis.
- Next we will compare the two products and see if your product was made to the design of their product. We will look at the similarities and differences. We have found that sometimes if there is a slight difference in the overall look of the product it can help in your defence. We will compile a list of all the differences and formulate a case around how due to these differences a consumer buying your product would not confuse it with the infringing product.
- For unregistered design rights, if your product is similar to that of another’s, we will see whether it was copied or made independently. If it was made independently we will defend you on this basis.
- We will look to see who was involved in the production of the design. If the design is jointly owned we will look to see how many people will be accused of design right infringement.
We have found that what you need is a solid rebuttal from the start to deter further action.
Our track record in resolving design right issues
We act for a variety of designers and manufacturers spread across a variety of industries. We use our knowledge of how to protect or defend a design rights infringement when advising our clients.
- Acting for a national clothing materials provider by reviewing new design rights after alleged infringement threats from competitors.
- Managing a design portfolio on behalf of a luxury shoe manufacturer to ensure maximum protection of our client’s brand in an increasingly competitive market.
- Conducting clearance searches for a leading sportswear manufacturer prior to registering new design rights to coincide with product launches. We ensured that our client was protected before commercial advertising campaigns began.
- Renewing a portfolio of design rights for a soft drinks trading company and taking enforcement action to stifle repeated third party design infringements by seeking an interim prohibitory injunction against the third party design right infringer.
The success of a business, or a new design, will be dictated by the level of protection you secure for your brand. Particularly with high-quality goods, design rights permit an owner to distinguish their brand from their competitors and market their products accordingly. This can only be done where design right portfolios are effectively managed – we can deal with this for you.
Design rights are important for your brand and image. Himanshu has the experience to guide you on management of your design rights from registration, to challenges and litigation.