FOUR INTELLECTUAL PROPERTY MYTHS ABOUT DESIGNS
There’s a lot to think about when launching a new product – co-ordinating manufacturers, finding stockists and of course marketing. Intellectual property is, perhaps understandably, not front of mind at such a time. Frequently we see young, creative companies failing to take the right steps to protect their IP at the crucial moment and living to regret it later when lookalike products appear in the marketplace.
This may be due, at least in part, to some common misconceptions that exist around IP – not least that it is complicated and too expensive to obtain. In fact, protecting the look of your product is not as difficult or costly as many believe and, if done well and at the right time, it can (and should) become a hugely valuable asset to any business.
MYTH: “My product’s automatically protected by copyright”
Well, we can’t rule it out, but in the UK the vast majority of commercial articles do not benefit from copyright protection as such. This is because UK law restricts the type of three-dimensional articles which can enjoy copyright protection to truly “artistic” works, such as sculptures and hand-crafted or bespoke items. Despite a huge amount of work and creativity going into the look of products which we use in our everyday lives, it is rare that they will be considered “artistic” in this sense. Original “industrial designs” such as these instead can attract a more limited form of intellectual property protection, called unregistered design right (UDR), which has a much shorter term than copyright. Whilst UDR has its uses, a stronger and more reliable way to protect the look of your product is to obtain a design registration for it.
MYTH: “But registering a design is expensive and complicated”
It needn’t be – in fact, depending on the case, a UK design registration can likely be obtained for a tiny fraction of the costs of developing and manufacturing the product, including professional advice. The application process is fast and straightforward, requiring only good quality drawings of the design and no convoluted “legalese”. In some cases, the application can be granted in just a few days or weeks. Plus, in the UK, the initial registration will stay in force for 5 years before any renewal fee needs to be paid – so for a small initial outlay, protection can be obtained for a significant period of the likely product life. If you do want to extend protection, UK renewal fees are minimal and allow you to keep the design protected for up to 25 years.
MYTH: “Professional advice isn’t worth it”
To the contrary, getting advice from a design attorney will not only make your life easier but could make all the difference as to whether your design registration provides effective protection. Careful thought needs to be put in as to exactly how to present the design in the drawings – which aspects of it to show, how to represent them best, and whether any features should be disclaimed. This is because the drawings define the scope of protection afforded by the registered design. Perhaps the most well-known example of a recent case in which this did not go to plan is that of Trunki™ – those distinctive, animal shaped suitcases on wheels for kids. Unfortunately the drawings used in their design application depicted the product using computer-rendered, shaded images which the court interpreted in a limited manner, resulting in the design registration proving ineffective against Trunki’s competitor. Getting advice at the outset may well have avoided this outcome.
MYTH: “I can register it later”
This one is actually half-true. Under UK law, you can register a design for a product up to 12 months after it was first disclosed to the public – so you can wait a while to see how successful the product proves to be before applying for registration. However, it is still important to start thinking about the process early since it is essential to get the timing right. Should you want to protect your market in other countries too, it is critical to get advice before you make any public disclosure since many territories do not have a “grace period” like that in the UK.
Want to know more about obtaining intellectual property protection for your designs? GJE have a range of helpful legal articles written with small businesses in mind, they also offer free 1-2-1 consolations here.
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