IP advice: Better by design

Many of us think of a 'design' as being synonymous with a 'plan'. However, from a legal point of view, a design is 'the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation'. In short, design rights protect the visual appearance of a product. However, other intellectual property (IP) rights are available, including: patents, which protect the technology embedded in the product; trade marks, which protect the brand name or logo of the product or company; and copyright, which protects any text, images or sounds associated with the product. Design rights may well be the unsung hero of the IP world. Often overlooked, they are a cost effective weapon of choice when protecting the aesthetic appearance of products. Their commercial advantage is significant in terms of their low cost (when compared to patents for example), the speed in which they can be registered and the length of their protection (up to 25 years, or five years longer than a patent). Registering your design To obtain valid registration, a design must be new (that is, not the same as any design already available to the public) and have 'individual character'. The test for individual character is often the most contentious point if the validity of a design registration is ever challenged. It is subjective and requires that the design as registered produces a different 'overall impression' on the 'informed user as compared to designs already in existence at the time it was filed. Getting it right: lessons from the courts One of the most important cases that considered the question of individual character involved air fresheners. Specifically, did the shape of the Air Wick Odour Stop product infringe Proctor & Gamble's community registered design for the packaging of Febreze. A Community Registered Design protects that design in all 28 EU member states. Initially Proctor & Gamble's design was considered valid and the Air Wick design infringed. However, on appeal it was held that that subtle differences between the two designs meant they produced a different overall impression on the informed user, so no infringement was found. The case suggested that when assessing validity (for registration), a design should be clearly different from known designs, though when it comes to infringement, just being different is enough to avoid infringement. More recently, the design of childrens' ride on suitcases were the source of legal debate. Magmatic's 'Trunki' and PMS' 'Kiddee Case' were compared in court. Initially, the court held that Kiddee Case design infringed the Trunki design. On appeal, this decision was overturned and no infringement was found. The court noted that surface decoration and colour were important when considering the overall impression created by the two allegedly infringing designs in question. While design rights are accessible in terms of their cost and commercially valuable with regard to the strength of their protection, it is clear that registration needs to be robust and well considered in order to get the broadest degree of protection. The judgments discussed above help us to better understand the features likely to be taken into account should validity and infringement of designs be assessed. If you are interested in seeking design protection for any of your products or associated packaging and get up, we strongly recommend speaking with an IP specialist. Further detailed information is available in the Knowledge Bank or by contacting a Partner at D Young & Co LLP. Both can be found at www.dyoung.com.