Protecting Your Brand Through Design Registration

Registered designs are often considered by IP commentators to be an underused and under valued right when considered against the more generally recognised patent and trade mark systems. But how a product looks can be very important, and can be part of the overall brand recognition. So when copying takes place, it is an issue that is often hard fought over.

One of the hurdles to protecting product design around the world has often been cost and accessibility. The introduction of the Registered Community Design, a system to obtain a single design registration to protect across all 28 EU countries, provided a revolutionary way for UK businesses to cost effectively protect their designs outside of the UK. With the ability to obtain a registration quickly, often within days of submitting an application, this also provides owners with the ability to mark product almost from the outset with the details of a registered right, thereby also providing a very quick deterrent against copying.

But protection in other countries still remained a challenge. The International Design System has been in place for some time, but a lack of commercially strategic countries joining the system, has meant that this has been a generally unattractive proposition.

The EU is a member via the Community Design, and the UK is set to join, but perhaps the real bonus is that from 13 May 2015 both Japan and the USA have joined the system. This makes the ability to protect product design potentially more accessible and cost effective for businesses, but will it be enough to encourage companies to protect these often highly valuable aspects to their business?

In fact the registered design systems of today reflect a recognition that design is not just in the product itself , but also other aspects that are often more closely aligned to the issue of brand reputation and brand recognition, namely elements of get-up and packaging. These elements are often critical to the overall question of brand perception, but are often wrongly overlooked in the race to get a product on the shelf, and when considering the balance of where to spend valuable marketing budget.

Yet with so many disputes over lookalike products, and the amount of creativity and development work that now goes into creating innovative packaging, are businesses “missing a trick” when it comes to protecting these important design elements?

The UK has recently introduced a number of changes to registered design law through the Intellectual Property Act 2014, including very importantly the introduction of criminal provisions for the copying of registered designs. Combined with criminal provisions already in place for copyright and registered trade marks, these can provide many brand owners with very powerful tools to take action against counterfeit goods.

Whilst these criminal provisions are not necessarily available elsewhere, it remains the position that registered design protection is often an undervalued proposition. Cost often comes into play and with the focus often on protecting technological innovation in products through patent protection, and brands through trade mark protection, packaging and product design often fall through the net – until that is there is a copying problem that needs addressing.

So what can be protected through design registration? As well as the appearance of the product itself, which can cover elements such as shape, ornamentation and pattern, it is also possible to protect packaging and containers, and, from the perspective of the digital age we now live in, it can be used to protect elements such as graphic symbols, graphic user interfaces, and, potentially, logos, although realistically logos do remain the domain of, and are better suited to, registered trade mark protection.

There is however another critical element when considering seeking registered design protection, particularly if there is a view to obtaining protection outside of the UK/EU at a more international level. If a design is made public before registered protection is sought, in many countries outside of the UK and wider EU this will remove the ability to obtain valid design protection. The UK and wider EU allow a “grace period” from public disclosure, which is really to allow for test marketing before investing in registered protection. Therefore a strategy of early pre-launch review is required by businesses wanting to retain the ability to use this form of protection.

So the much overlooked and side-lined International design registration system, which offers a centralised administrative procedure for up to 64 countries (of which 49 are accessible through the system for UK businesses), by now including Japan and the USA alongside the EU, looks set to become an important part of the getup and reputation protection mechanism for many businesses.

Ultimately the issue for businesses is not only to develop an understanding of the protection mechanisms available to them to protect all elements of brand and get up, but also to have a clear strategy and approach to identifying and capturing the rights available through a combination of trade mark and design protection alongside copyright issues – and to consider these at as early a stage as possible in a project.