Protecting Designs – Getting it Right

October 14, 2008

During the last year several cases have highlighted the current state of flux in Registered Community Designs (RCDs). This area of law remains a frequently overlooked and underrated intellectual property right). RCDs can potentially offer organisations with a very effective tool when faced with infringing copycat designs.

Key to relying on RCDs to attack copycat products is the RCD application itself. Applications should be drafted with infringers in mind – i.e. the goal is to look at ways to represent your designs in ways which most effectively ring fence the most important elements of your designs from copycats.

Using a series of photographs or even just one photograph of a design should nearly always be avoided. Although this approach may well be accepted for registration purposes by the Office for Harmonization in the Internal Market (OHIM), the approach will in many instances allow others to simply ‘design around’ a RCD. It will often fail to encapsulate those features of the design which the organisation wants to prevent others from copying.

The actual representation of the design contained on the registration itself is what is scrutinised when considering alleged infringing designs – not the actual product out in the market. This point is illustrated by the relatively recent design infringement case involving handbags, in which a photograph was used to represent the overall finished product sold to consumers. While it is undoubtedly straight forward and time effective to use a photograph to represent the design at the application stage, a more tactical approach to design applications is likely to give a claimant much greater chances of success when placing reliance on the design.

The best approach to design protection by RCD is to either use fine line drawings, or if budget permits, register each separate element of the design as well as the overall design. Separate registrations will often give a greater chance of successfully preventing copycat designs.

Whilst RCDs cannot guarantee to catch all copycats in all circumstances, the fact is that good representations of designs at the application stage stand a much greater chance of success than reliance on a grainy photograph filed in haste at OHIM.

Building a strong IP portfolio should never involve treating IP rights in isolation of each other, a bundle of registered designs, along with other IP rights such as trade mark registrations amount to a menacing arsenal of protection to any copycat designers.