Protecting Your Product Designs
Introduction
A recent Court of Appeal decision has once again highlighted the importance of taking steps to prevent innovative product designs from being copied by competitors.
How can you best protect your product designs?
The safest course of action is to try to register any innovative product design that you come up with as a registered design. This can be on an individual national basis (e.g. a UK only registered design) and/or on a EU wide basis (through a Community Registered Design).
Both forms of protection are relatively cheap to obtain and, once obtained, a registered design can be used to prevent a competitor from using the same design, or a design which does not produce on an informed user a different overall impression to the design that has been registered.
The key point to bear in mind is that registered designs are "monopoly" rights. They not only prevent third parties from copying your design, but also prevent third parties from using the design, whether or not they copied it (i.e. you can stop them even when they come up with their design completely independently and without any prior knowledge of your earlier design).
Anyone who infringes a registered design can be sued for damages, or on account of profits. It is also possible to obtain an injunction to prevent them from selling products that infringe the registered design and to get an order for delivery up/destruction of all products bearing the infringing design.
What has the Court of Appeal recently said?
The Court of Appeal recently handed down the first appellate Court decision anywhere in the EU on the question of when a product a will be held to infringe a Community registered design.
The Court has given some helpful guidance on how to interpret the law relating to Community registered designs.
What the decision also reminds product designers is that if they come up with designs that are new, and create a different overall impression from designs that have gone before, then they really should look to register their designs as registered designs, in order to be able to prevent third party competitors from unlawfully and unfairly taking advantage of their hard work and creativity.
As Carl Steele, a Partner in the Ashford's IP team, explains:-
"The best course of action is to register new, innovative product designs as registered designs.
By doing so, you give yourself a better chance of being able to prevent a third party competitor from using your design, or something very similar, and then selling their own competing products side-by-side with your products.
Obtaining registered design protection is relatively cheap and quick to do. Whilst a registered design will not prevent somebody from being able to make a product that functionally works the same way as your product, they cannot make one that looks like your product, or one which does not produce a different overall visual impression from your design.
The other point that the recent Court of Appeal case reminds us of, is that if you are a designer considering a new design for a product, you need to carry out appropriate clearance searches to make sure that no-one else has already come up with that design, or one which does not produce a different overall visual impression from your new design. If you do not carry out clearance searches but simply start using your new design, it may be that you will end up infringing someone else's earlier registered design - which will then mean you will have to withdraw your product from sale. You may also be ordered by the Court to compensate the owner of the earlier design, by way of damages or to account for the profits that you have made through sales of your infringing products".
Whilst we obviously hope this article will be of assistance to you, it is intended to provide only generalised guidance on English Law and is no substitute for specific advice in relation to the circumstances of a particular case, which we are happy to provide.
Ashfords is regulated by the Solicitors Regulation Authority. The information in this article is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.
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