How To Protect Your Product Design
William Miles www.briffa.com
When you innovate and create new designs it is essential that you protect your ideas. Protecting your intellectual property (IP) helps you stop competitors and copycats from stealing your designs.
When should you protect your products?
Sometimes when we have designed an amazing product after spending years of development and when we market it sells well and better than expected. After a few years of exceptional sales, it hits you that you should protect your design and get it registered.
Well, this may be too little, too late, and is a frequent issue that has affected many of our companies. The problem is that registered designs (a valuable but relatively inexpensive intellectual property right) in the UK and EU must be registered within their first 12 months.
A registered design is used to protect the external shapes of products. If your design has been out in the world for more than a year before you register it, any registration you file can be subject to an attack. This can make it vulnerable, and the registration can be cancelled completely, and you will be left with unregistered design rights.
Unregistered designs means that they are free to own, however, they have a limited term. They expire frequently and in the UK, they only last for 10 years after the first sale and after 5 years of owning an unregistered design you need to give a license to anyone who wants one. This is known as license of right. In the EU they only last 3 years, which is not enough time to impact the market, generating little to no revenue to justify your efforts.
If you’re relying on an unregistered design as your infringed IP right, the burden falls to you to prove that the copier actually copied your design. If they have just happened to create something very similar and had never actually seen or heard of your own design before, then they are likely to have a very strong defence against your claims.
Registering a design
When you register a design, it lasts up to 25 years, subject to renewals every 5 years. This gives you enough time to monetise your creative work. Furthermore, if you have an earlier registration, if someone else creates a similar design then they cannot avoid a claim by stating they haven’t seen your design before.
Registering your design makes the job of stopping infringers much easier giving your claim a higher chance of success. It helps to safeguard your business interests with more legal protection. To register a design fully it needs to be completely new. If your design is similar to an existing design it can cause difficulties and when it comes to comparing them, the test is whether the similarities are so strong that the differences become irrelevant. These can become lengthy legal disputes and an outcome is not always easy to determine.
So, how do you protect your design? The answer is to register it, ideally with the benefit of some prior legal advice to make sure that what’s filed is the best representation of your design.