INTA Designs conference 2018: Why industrial designs should be protected
Ignoring industrial designs or treating them as the least important option is a thing of the past. Designs will increase in importance and therefore need to be part of the intellectual property portfolio. This was the main message at the INTA Designs Conference 2018 on 26–27 February 2018 in London.
This was the third INTA Designs conference. Businesspeople and lawyers alike think primarily of trademarks and copyright when they think of protecting a brand and products. Until recently, designs were treated—to quote one panellist—like the “unloved children” of intellectual property. This was not necessarily the best approach. Experience has shown that greater attention needs to be paid to designs as they can be an effective tool in the fight against unscrupulous market competitors, a fight in which the odds are uneven.
What a design is and why it should be protected
A design is simply the appearance of a product or of an element of a product, formed in particular by features such as lines, contours, colours, shape, texture of material, or ornamentation—all of these features have a direct impact on how a product is perceived. Therefore, designs are especially important in industries where the appearance of goods is key to commercial success. The fashion industry, including manufacture of accessories and jewellery, the furniture industry, functional electronics, and the toy and automotive industries are most interested in using designs to protect products. Fashion designer Stella McCartney’s business is a clear example of how products can be protected as designs:
Less obvious objects, such as a computer interface or display pavilion, can be protected as designs:
A design must be new (never before revealed to the public) and unique, which means that the overall impression made on an informed user must be different from that made by any design known to the public up until that time.
There are companies that already understand the valuable role designs can play and for whom they are high on the list of intellectual property rights. For example, the manufacturer of the Philips brand of functional electronic goods holds more than 2,300 registered Community designs vs. a “mere” 320 EU trademarks (as of March 2018). Meanwhile, many manufacturers still do not register designs as they believe that copyright or laws on unfair competition, for which no registration is required (in Poland and many other countries), afford them a similar level of protection. So why do designs need to be registered?
- An easier way of enforcing protection
When seeking enforcement of copyright, a claimant first has to demonstrate that its product is a copyrighted work, and that it is the copyright holder. The subject matter, scope, and ownership of this right are therefore determined on a case-by-case basis during the breach remedy process. The right to and ownership of a registered design follow directly from registration, and under laws on Community designs, validity of this right is presumed. This shifts the burden of proof to the contrary to the infringing party. These factors make enforcing protection considerably easier. Unfair competition laws require on the other hand demonstration that a product was the first to appear on the market, or true and adequate presence of an undertaking on the Polish market. These obstacles can be avoided by enforcing protection on the basis of designs.
- Effectively fighting counterfeit products
Registration of the form of a product as a design is also very important when counteracting piracy. It helps to prevent counterfeit goods that do not bear the manufacturer’s trademark—often intentionally—from being placed on the market.
- Obtaining a right cheaply and quickly
Registration of a design as a Community or domestic design is relatively cheap and quick, and a large percentage of registration filings are successful.
- Specialist court and quicker handling of proceedings
Also, disputes concerning claims for infringement of Community designs are heard solely by specialist courts. In Poland this is the 22nd EU Trademark and Community Designs Division of the Warsaw Regional Court. Disputes referred to specialist courts are processed more quickly, but there is also greater certainty of the ruling being correct. The increasing number of design cases will help make rulings consistent. Predictability of legal viewpoints and the probability of adjudications benefits rightholders.
What to bear in mind when using designs
- Any right better than no right?
Protection using designs is not foolproof. Using designs—at the registration stage or when enforcing the ensuing rights—should be properly considered. It is worth consulting a professional—a legal adviser, advocate or patent attorney specialising in intellectual property, in particular designs.
The main problem that arises when registering a design is that the registering authority does not assess it based on merits—and this is also an advantage. On one hand this means that a right is obtained quickly and cheaply. On the other, because the review of a registration filing is only formal, this shifts responsibility for design clearance onto the owner. The owner has to conduct a search to ensure that the design is new and unique in character. Of course there is the option of only taking a superficial look at the current designs in the segment in question, taking the approach that any right is better than no right. This is not an adequate protection strategy; a right of this kind, of a formal nature but insubstantial, will be checked by a rival quickly and is not a safeguard against infringement. It therefore does not serve the principal purpose of intellectual property rights. Worse still, it could also turn out to infringe other people’s intellectual property rights.
- Disclosure and drawing
Holders of rights to designs stressed during the conference in London that during registration the “2D” rule of “disclosure and drawing” is key. The moment of disclosure of the design is crucial, which occurs for example when the product consisting of the design is launched. Unlike in the case of trademarks, disclosure too early in the registration process destroys its novelty. In the system of Community and Polish designs, the holder has 12 months to file for registration from the moment of disclosure. Parties registering designs are not always aware of this.
How a design is presented during registration also has a major effect on the scope of the right. The way the design is presented (in photographs, drawings, computer-generated images) is important, as is description of any part of the product the design relates to (using points, highlighting, shading). Whether the design is black and white or colour and whether it contains additional elements such as the holder’s logo is also important. The more detailed the design, the easier it is to demonstrate that it conflicts with a product that is deceivingly similar in which the details are reproduced. On the other hand, this will make the protection narrow and it will be of limited use in counteracting infringement.
Community designs that are not registered are protected to a certain extent. They are very important in industries in which products have a short shelf life (in the case of clothing it might be a mere three months) or a lot of new models are entering the market. They are popular as a means of enforcing protection in particular in the United Kingdom, where trust in registered designs has waned in recent years. One of the reasons for this was the notorious case of Trunki children’s suitcases. The UK Supreme Court found that a registered design had not been infringed. The case was widely commented upon and led to a campaign in social media called #ProtectYourDesign.
Summary
Accounts of experiences of the attendees of INTA Designs 2018 and the increase year by year in the number of registered designs show that they are emerging from the shadow of other intellectual property rights. To protect a brand effectively, design has to be included in the portfolio of rights. The cost of disregarding this trend on the part of undertakings could be high in the literal and figurative sense.
Dominika Kwiatkiewicz-Trzaskowska, legal adviser, Intellectual Property practice, Wardyński & Partners
