Design law seeks to offer designers a form of protection for their designs. However because of the complexities and legal nuances, it is not always easy to identify what protection is available for a given design and how that protection may be achieved. As a result, design law can, if not properly applied, end up being about as much use as a chocolate fireguard.
The general approach of intellectual property law is to offer a series of discrete, but overlapping, rights or forms of protection. In the UK and the European Union, there is a family of related rights specifically to protect designs. There are also other forms of intellectual property rights (IPRs) that protect different types of intellectual property. Each IPR operates differently although there are some similarities between different rights.
As a concept, design has a wide range of meanings and applications, from graphic design to product or packaging design and of course engineering design. The legal protection of design in the broadest sense is not straightforward due to the number of elements that often constitute a design – including engineering design – and which may fall outside the scope of what the law defines as a design that is capable of protection. This means that other IPRs may also have some application in the design context.
For example, if a product includes an inventive concept, it may be capable of protection by a patent. The copying of design drawings, whether concept sketches or engineering drawings, will be prevented by copyright and any branding (including even a distinctive 3D shape) may be protected as a registered trade mark.
IPRs also operate on a territorial basis so different protection may be available in different countries. For example, the same design may be protectable separately in the UK or in Hong Kong. There are also multinational rights that may provide the same level of protection across all member states within the European Union on a single application or where one application can be made for a bundle of national rights in different countries.
Focusing in upon design protection in the UK and the European Union, the law defines designs to mean the appearance, shape or configuration of a product or of part of a product. It could be the lines and contours, the colours, the texture or the materials used. Alternatively, it could be the overall shape of the product in question or of a single element or component.
Getting down to basics
The most fundamental aspect of design protection is that it only protects new or original designs. It can be important to consider the state of other designs that are available at the time the new design comes into being and to identify whether the new design is in fact different from those pre-existing designs. In addition, elements of a design that must fit or match other components, such as automotive spare parts or replacement body panels, are excluded from design protection.
A relatively basic level of protection comes into being automatically when a design is first recorded in a design document, such as a concept sketch or production drawing. Within the UK the unregistered form of protection lasts for 10 years from the first marketing of the product. An additional form of unregistered design protection will also apply across all EU member states for three years after a design is fi rst made available within the EU.
A more effective and longer lasting form of protection comes through registering a design with the UK Intellectual Property Office (formerly known as the Patent Office) or with an office of the European Union institutions known as OHIM in Alicante, Spain. In return for the additional costs involved in the registration and renewal of a registered design, protection may be secured for up to 25 years.
One of the principal purposes of design protection is to enable the owner of the rights in question to prevent others from exploiting or copying the protected design without the owner’s permission. If a potential infringement is discovered then there is a range of options for the rights owner. The rights owner can give notice of his or her rights in the design or may bring court proceedings, potentially including an application for an injunction or court order to stop any further infringement. The rights owner may also be entitled to fi nancial compensation and the destruction or delivery of any infringing copies of the design. The infringing party can also be compelled to provide details of the other parties up and down the supply chain.
In addition, intellectual property rights are themselves capable of commercial exploitation in the sense that a design may be assigned (or transferred) to a third party for a lump sum, or alternatively the third party could be granted a licence to use the design in return for a licence fee or royalty. Of course the precise terms of any licence or assignment will vary with the commercial interests of the parties concerned.
Accordingly, despite the potential complexities, design law offers a useful and effective form of protection for this particular type of intellectual property. That said, the devil is always in the detail of design law and so it is always advisable to take legal advice at an early stage so that you can ensure that this form of protection may be deployed to your best advantage.
Iain Colville is an associate at Wright Hassall LLP, specialising in intellectual property disputes and infringement claims. In particular he has experience of design protection in products as diverse as interior light fittings, door hinges, luggage trolleys, flatbed recovery vehicles and the pocket stitching on a pair of jeans. Alas no chocolate fi reguards, but an original design should be capable of protection and, even better, a chocolate fireguard that does not melt would probably be patentable! If you would liek to speak to Iain about intellectual property please call him on 01926 880753.
