IP Basics: How to protect your designs

Welcome to the latest episode of Gowling WLG's Global Intellectual Property podcast, where we discuss a range of topics to help you protect your brands, creations and inventions.

John Coldham: Hello, I am John Coldham and I am here to introduce you to designs. This is not intended to be a detailed analysis of the law, but instead to provide you with an overview of what designs can protect. There is a jumble of different rights all of which can be used to protect different aspects of a design and I will also give you an idea of what you can do with them once you have them. We will also look at various practical considerations along the way.

Designs have historically been seen as the poor relation of other IP rights with most IP specialists describing themselves either as a patent or a trademark lawyer. And this was hardly surprising there was only ever one or two cases on designs per year and it did not seem to be of much interest to clients. The cases we advised on were focused on designs of reasonably expensive consumer products, such as household appliances. Otherwise, the disputes were not really worth running as their costs would quickly outweigh the value of the claim. However, things have changed dramatically particularly in two respects. First, people are starting to appreciate the breadth of what designs can cover and secondly, there are new opportunities to enforce designs cost effectively in ways that did not previously exist.

We have produced a free guide for designers covering the various legal considerations that you should think about when you design something to ensure you are not ripped off as soon as it is successful and this can be found on our dedicated webpage at gowlingwlg.com/designsforlife. The page also contains details of our annual involvement with the London Design Festival, including podcasts from leading designers and other materials that we hope you will find useful.

This podcast is part of a series introducing you to a full range of IP rights. Starting with an overview of designs, there are two principal categories of designs that protect you in the UK - registered and unregistered. The registered ones last longer, they are more certain, in that you have a certificate, and they tend to lead to fewer questions from potential infringers. The unregistered ones are free, as there is no registration, and they can sometimes be easier to enforce in the right circumstances as they are more flexible. On registered designs, you will need to consider whether you would like to cover just the UK or the EU as well. If both, you need to file separate applications. For unregistered designs these are really quite different rights that cover different things. You could have a product that is covered by both registered and unregistered rights.

The first thing to say about registered designs is that they are in comparison to other IP rights very cheap to register. Official fees for UK registered designs now work out at just over £2 per design when you file a number on the same day. The first one costs £50 but then each additional one only costs a couple of pounds. EU, sometimes called "community designs", are only €350 but they cover the whole of the EU and there are significant reductions on those as well if you file multiple designs at the same time. Renewal fees, which kick in after the first five years, are on top but you can decide before the first renewal whether or not the product is worthy of the additional investment for the longer term protection. Registered designs cover the shape, colour, material choice and so on of a product. The registered design for a particular product is defined only by the detail shown in the images on the register. To be registered, they have to be new, have individual character and that means that they are sufficiently different to what went before to be worthy of protection. If you then find another design on the market after the date of your design registration that does not create a different overall impression to the registered design, you can take action to ensure it is removed from the market. It is important to note that you do not need to prove that there has been any copying when you allege registered design infringement, unlike for unregistered designs. This means that they are very useful on online enforcement for example on takedowns on the major market places. If you are successful in proving infringement you are likely to obtain an injunction and damages for any past infringement.

Turning to unregistered designs, community (that is EU unregistered designs), which have an equivalent UK version called supplementary unregistered designs, offer a similar type of protection to registered designs. That is they cover the shape, the colour, the surface decoration, the choice of materials of the Design and so on but they only last for three, instead of the registered designs' 25, years. Although they are automatic, you either have them or you do not, you only get them in certain circumstances. For community unregistered designs, you get the protection if you first launch a product to the design within the territory of the EU. So, if you first launch it in the UK or the US then you take it over to Europe you will not get that EU unregistered design protection. And, if someone else, a manufacturer for instance, first shows the product publically in China then you still will not get EU protection.

However, provided they clear this hurdle, people based anywhere in the world can qualify for this protection. There is a similar rule for the UK equivalent but, of course, the first launch has to be in the UK. There is an argument that if you launch simultaneously in the UK and the EU, for example by putting the product on a website that is available to both regions, you might be able to get protection in both places. However, this has not been tested and so is not yet known whether this is definitely the case. There is an additional type of unregistered design in the UK which is not the equivalent of the EU version. The original UK unregistered design is a very different thing. It is limited to the shape and configuration of a product. Although the latter can be helpful in certain circumstances, the best way to think about UK unregistered designs is to think of them being for shape only. The decoration on them, the materials used, for example whether it is made of glass or something opaque and so on, are to be ignored. This actually makes UK unregistered designs broader, they cover situations where the infringing product may have quite a few differences but still be infringing. Only certain people qualify for UK unregistered designs.

The rules are complicated but if you are a designer working in the UK either for yourself or for a company that has a substantial base in the UK then you are likely to qualify. Designers from other major economies such as the EU, US, China, Japan and so on do not qualify and so the design right does not even come into being if they were the designer. There are some ways around it, for example working together with the designer from China provided the UK designers have also been involved, but other ways around it include choosing to first market the product in the UK. As these circumstances are complicated, I definitely recommend getting advice. UK unregistered designs last for the lesser of 15 years from the date of the design or ten years from the date of first marketing of that design, but for the final five years of protection in either case you have to grant a licence if asked for a fee.

For both types of unregistered design, the case against the alleged infringer will only be successful if you can prove that they have copied the product. If they have not, then you cannot win. In many cases that is very straightforward or the similarities are so great that it is for the person responsible for the accused product to prove that it did not copy.

Some practical considerations. If you remember one thing from this podcast it is that key to the successful protection of designs is to ensure that you have decent records of your design process. This includes the date of the design, the identity of all those who were involved in the design process and the details of what was new over and above earlier designs and so on. When recording who was involved in the process it would be useful to record whether they were employees and, if so, of which company and if they were not employees then what their nationality is and where they are based. These are all things that you will need should you later wish to rely on unregistered design rights and it is perhaps surprising that how few companies big and small keep accurate records of such straightforward information. Piece it together in the moment of trying to pursue an infringer is much more complicated and costly. If you then decide to register your designs, we recommend seeking advice from a specialist, design filing is not a service that we provide ourselves in the UK but we work closely with experts in this area and can put you in touch with if you would like us to do so.

When filing designs consider filing several designs for a single product, particularly if it is a key one for you covering different parts of the product and differing levels of detail. Remember that they do not all need to reflect your actual product. You could register some design variations as well to broaden your protection. The more designs you file at once the lower the marginal fee is for doing so. As I said earlier, design fees for UK designs can cost as little as £2 per design.

Turning to enforcement of designs, once you have your design and someone has strayed too close to it, there are a number of strategies that you can deploy to stop them. This will depend on the circumstances and there is no one right answer. It is also another good time to seek specialist advice as often a well thought through enforcement strategy can cost a lot less than an unplanned knee-jerk approach. Just as designs are tricky to file well, there are also few lawyers who litigate them regularly. Done right, designs can be an extremely useful tool to prevent people from taking advantage of your designs and your investment.

It does not have to be an expensive rush to court either. Registered designs are particularly effective at nipping disputes in the bud early, but well documented and evidenced unregistered design cases are also often resolved quickly.

If court proceedings are needed there are now a number of options available, from the lower cost Intellectual Property Enterprise Court to the new Shorter Trial Scheme of the High Court for higher value disputes. This Shorter Trial Scheme is also quicker than the old school High Court proceedings. Both of these options are perfect for designs disputes and we have seen a real reduction in the cost of pursuing designs claims and even if court proceedings are started most cases settle at a very early stage. It is also worth remembering that you can use particularly registered designs to do online takedowns and other ways of enforcing your rights.

A final point to note is that designs can be very useful revenue raisers. If you do not want to manufacture your design yourself, you can licence a third party to do so and charge a royalty. This is much easier to achieve with registered rights as there is a tangible document that forms part of the licence agreement and helps to clarify precisely what is and is not included in any deal.

As I said at the start, for much more information about designs, from inception to manufacture to exploitation, please visit our dedicated website at gowlingwlg.com/designsforlife. From that page, you can download our comprehensive booklet on the whole life cycle of designs and how to make the most of your creativity. Or you can drop us a line and we will send you a free hardcopy. The page also contains details of our annual event at the London Design Festival and includes podcasts from leading designers who have participated in previous years. Thank you for listening.

Thanks for joining Gowling WLG for this podcast. If you enjoyed this episode, be sure to check out our website at gowlingwlg.com for more useful insights and resources and don't forget to subscribe to ensure you join us for our next episode.