The IP Guide to… Industrial design

The market in these goods is keenly competitive and growing all the time, particularly in the consumer electronics field. Protecting your IP rights is essential to ensure you make the most out of your design.

There are various relevant IP rights. This guide will consider

• design rights and registered designs;
• copyright;
• patents; and
• trade marks

Design
You can protect property in designs through a design right or a registered design. The rights apply to different types of object and have different terms. With either, it is always important to make a physical record of a design, both to prove that you came up with the idea and to make sure that an IP right exists. This is quite easy – always date and retain the original drawings used to make a prototype of a new product which features the design, as well as the prototype itself.

Design rights
Design rights protect the appearance of a functional product. The design does not have to have ‘aesthetic’ appeal. To qualify for a design right, the design must be original and be recorded.  It can arise so long as the design itself is not dictated by the function or determined by the need to ‘fit’ with another product or component (the ‘must-fit’ exception).  It must not match another part of the product either (the ‘must-match’ exception).

Design rights only prevent copying. So, the right will not be infringed if someone merely makes an identical product. You must also prove that they copied it from you. The right arises automatically, without any need for registration, as long as there is a physical record of the design.

A design right will last for 10 years from the first marketing of the product or 15 years from the creation of the design, whichever is earlier. For the last five years of this period anyone is entitled to a license as of right, meaning that you cannot stop them from making products that copy the design, but you can be paid when someone is granted a license to do so.

Design rights will only protect your work in the UK; but you can also register Community-wide rights.

Registered designs
Often overlapping with design rights, it is also possible to protect a design as a registered design.  Registration confers protection of up to 25 years from the date of application.

The scope of the protection offered is potentially very broad and can include things such as shape, colour, contours, lines, materials, texture and ornamentation. So, for example, the aesthetic qualities of a new range of mass produced furniture, or a new mobile phone could potentially be protected by a registered design.

A registered design is useful as it grants a monopoly to use a particular design. This means that if anyone else makes a product that has the same design, even if they have not copied it, this will infringe your rights. This gives you a higher degree of protection than a design right.

As with a design right, a registered design must be both new and original.  The same ‘must-fit’ exception to gaining a design right over a product or a part of a product applies to getting a registered design.  However, the ‘must-match’ exception does not apply, as you would expect from a right intended to protect aesthetic appeal.

You must register a design within 12 month of first making it available to the public. This ‘grace period’ can be very useful to test whether a design is commercially successful enough to justify the expense of registration.

Copyright
Copyright protects works of ‘artistic craftsmanship’ and applies only to those items which are made by hand or individually, not to mass produced, identical items. This means that copyright is unlikely to be the best means to protect the designs of most industrial products.

Copyright and design rights/registered designs may overlap in some instances. In this case, the general intent of the law is to try and ensure that you cannot gain a greater right to protect a piece of work than if it were protected by just one of those rights.

Patents
A patent will permit the inventor of an industrial design to stop third parties from using that design, granting a monopoly over it.

In order for something to be protected by a patent:

• It must be ‘new’, meaning information about the invention must not be in the public domain.

• It must feature an ‘inventive step’, meaning that it would not be an obvious step to someone with knowledge and experience in the field. This is the core requirement of what people usually think of as an ‘invention’ and means that a patent can only be granted if the product or process in question is innovative, not merely to the lay person, but to someone working in the field in which it is applied.

• It must have ‘industrial application’, which simply means that it can made or applied in one or more industries.

• It must not be something that is excluded by statute from being patentable. These relate to things such as mathematical formulae and are unlikely to be of relevance to someone working in industrial design.

As long as it meets the above requirements, you may want to patent your product if it operates in a better way than the competition or if it offers an innovative solution to a problem. For example, the multi-bladed razors produced by Gillette were patented, as it was argued they shave more efficiently than a single bladed razor.

This type of right does not arise automatically. An application for a patent will need to be made and granted for the design to be protected.

In the UK, patents have a duration of 20 years from the date the application is made.

Ownership of IP rights
IP rights in industrial designs are significant in a wide range of situations and can give rise to complex disputes. It is important those involved in the creation of the designs and their use and exploitation have a good appreciation of their own rights and the rights of the other parties with whom they deal.

Content supplied by College of Law students at the Moorgate Centre supervised by Tim Harris of Bird & Bird LLP.

Image: Rebecca Skinner: www.rebeccalouiseskinner.com