Designs are key assets for many businesses and there are several aspects that are vital to success. In this guide from our Designs for Life series, we take a look at the design process.
Each designer will have their own process, but an understanding of design law, and its impact on the design process, is crucial from the outset. The following explains how a business can manage its design process so as to protect its investment and minimise its risk.
- Get contracts with designers in place
- Clearance / avoid infringing third party designs
- Ensure documentation and awareness of origins of the design
- Consider registration
- Include notices when design is published
- Store all records and notes made in respect of the design
Step 1 - Contracts
- First, a business needs to ensure it owns the design. As obvious as this may sound, potential claims often fall at this first hurdle, particularly when contractors are involved.
- Employees. Designs created by employees in the ordinary course of their employment will generally be owned by the business automatically. Nevertheless, provisions dealing with the ownership of designs should be spelled out in all employment contracts, as should an employee’s obligations in respect of those designs. Not only will this clarify the business’s legal rights, it will also put employees on notice of what is required of them, alleviating the risk of future disputes.
Contractors. In the UK, the law changed in 2014 such that the commissioner of a design no longer automatically owns that design. Therefore, if a design consultancy, or a contractor, is used, it will own the design under UK law unless a consultancy agreement dictates otherwise. It could also affect the qualification for UK unregistered designs. It is therefore vital that all third parties involved in the design process have signed an agreement with the business before work is commenced.
The terms of the agreement will depend on its nature, but should generally include the following provisions (please note this is non-exhaustive):
- Transfer. A provision that all intellectual property - both existing and future - shall be assigned to and shall vest in the business. Note however that under UK law, a purported assignment of future registrable rights may operate only as a contractual right to call for that assignment once the right comes into existence. By getting its rights in place before work begins, a business can avoid delay and dispute further down the line. Local advice should be sought in respect of rights involving jurisdictions abroad.
- Further assurance. A requirement that the contractor takes all necessary steps to perfect the above assignment (including signing documents to be filed with the relevant IP office). It may also be useful to oblige the contractor to assist the business in respect of any claims relating to the design.
- Confidentiality. A requirement that the contractor documents all of its work properly and keeps all such documentation confidential. This is discussed further below.
- Originality. A requirement that the designs will be the contractor’s own work (i.e. not copied from pre-existing designs).
Step 2 - Clearance / avoid infringing third party designs
By infringing a third party’s rights, a business exposes itself to being sued for damages and/or being restrained from marketing its own products (among other things). The risk of infringement can be greatly reduced by adhering to some straightforward (but often ignored) guidelines.
- Avoid copying
- Ensure the design is original. Prior third party design documents will usually benefit from copyright protection, while unregistered design rights may subsist in both the design documents and the articles made to that design.
- Unlike registered designs, which give monopoly-style protection, unregistered rights (including copyright) are only infringed if they have been copied. In other words, if the business can prove it created a design independently, it will not be liable for infringement of an unregistered design.
- Of course, in reality, designers do not operate in a vacuum - they draw inspiration from the world around them, including other products. So be careful when "taking inspiration" from pre-existing designs and ensure that the ways the designs has departed from earlier designs is documented.
- Once a design has been arrived at, checks can be undertaken to minimise the risk of infringement. Clearance searches are difficult in respect of registered designs, as protection is not limited to any particular field. Therefore a decorative design on, for example, a wall clock could infringe a design registered in relation to a product in a different field, such as garden furniture. Further, a three-dimensional article can infringe a registered two-dimensional design.
- One way to minimise risk is to consult with the designers and identify any designs or products used for inspiration. If there are apparent similarities then legal advice should be sought. Searches can be conducted to check if and when the prior designs had been registered and to help identify other relevant registered or unregistered designs. Searches for registered designs can be conducted here in respect of UK designs and here for EU designs. It is advisable to instruct a lawyer to conduct such searches, if required, as this is a technical and complex area.
Step 3 - Document design process
Good practice during the design process is vital. Building on the contractual rights detailed in Step 1 above, the following procedures will help to protect the business’s rights during the design phase, and enable it to enforce designs further down the line, should the need arise:
- Documentation. Ensure each iteration is properly documented. Like any creative activity, product design does not follow a strict formula. The process is often complex, with input from a variety of sources being recorded on different media, from simple paper sketches through to detailed CAD drawings. It is important to ensure that each stage is documented as even the earliest paper sketches could ultimately prove invaluable.
- If a competitor later claims that a product has been copied from one of its own designs, evidence of how the product was developed from an initial design concept could help to prove that no copying has taken place. Alternatively, if the business has had its design copied by a competitor, the development drawings may help to explain how the design is novel and original over prior designs, thus rendering it capable of attracting design rights.
- The business may also have rights in the developmental designs, not just the end result, meaning that if an early iteration of the design has been copied (e.g. an ex-employee takes a concept to a competitor), the business may be able to rely on the drawing of that early iteration. In an ideal world, all iterations should be recorded, with the drawings stored together in one location. The designers themselves should be encouraged, if not obliged, to record and store their ideas at the business’s premises, or electronically on the business’s server. Reliance on the memory of the designer is undesirable - particularly given the tendency of former employees to be unwilling to help.
- Confidentiality. Ensure all documents are kept safely. The most effective method of protecting designs prior to publication is to keep them confidential. If competitors cannot get hold of a design, they cannot copy it. It is well-known that highly innovative companies go to great lengths to keep their new designs confidential.
- Also bear in mind that unregistered design rights have relatively short lifespans, commencing when the design is made public, so early disclosure could shorten the term of protection. The source of early disclosure is often the business’s own employees. It is therefore important to implement safety measures and encourage good practice, such as encrypting laptops, avoiding travel with hard copy documents, and preventing employees from taking designs (even early sketches) with them when they leave the business.
Step 4 - Consider registration
In addition to unregistered rights which will subsist automatically if applicable, the business may decide to seek enhanced protection by registering the design. This decision will hinge on many variables, some of which are discussed in our "Registration" guide.
Step 5 - Include notices when design is publicised
This acts as a deterrent, and could improve the remedies available if infringement is proven.
Step 6 - Store all records and notes made in respect of the design
Having an independent means of proving the date of a design drawing can be extremely useful, as the precise date of design could be very relevant if there is a need to enforce the designs later. There are various databases that offer third party verification of the date of a design drawing (for a fee), or the documents can be self-addressed and posted to rely on the postmark (only be sure not to open the envelope!). Some designers use the cheap UK registration system as evidence of dates of designs for UKUDR protection
Gowling WLG's Brands, Advertising and Designs team is a leading designs law team and are actively involved in shaping designs law. We have acted on a number of the significant, reported designs law cases in the UK over recent years, and have been the proud holders of the MIP Designs Firm of the Year Award for four years (2019 - 2022). We act for a number of design-led clients.