Richard Poynder
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More protection against pirates


6 October 2002

As the very latest in haute couture was paraded on the catwalk at London Fashion Week last month, Britain's top designers were conscious that the moment they revealed their innovations to the public, But unscrupulous pirates could start copying them and flood the market with imitations.

Such worries are not limited to fashion designers: the global explosion in the counterfeiting of branded goods is a concern in many industries. Anti Copying In Design, a UK trade association, estimates that its members lost about £20m through product plagiarism in 2001.

Last December, as part of continuing efforts to curb this growing piracy, UK design laws were updated - widening the net on what can be registered and broadening the scope of protection. The changes are the result of a European directive to harmonise national design laws. Further European legislation will come into force next spring.

What is a registered design? Like a patent, it provides monopoly protection for a period of time - 25 years rather than a patent's 20 years. However, where a patent protects novel products and processes, a registered design protects the outward shape or configuration of a product.

The amended legislation has introduced a number of significant changes. First, where previously a design could be registered only in relation to a specific article, the design itself can now be registered. Before, a designer registering a plate with a floral pattern had to obtain new registrations if it was later applied to, say, table linen or curtains; now the pattern can be transferred to other articles without further registration.

And where previously protection was available only for products made by industrial processes (and in quantities of at least 50 items) now handicraft items, and even single articles, can be registered. The changes are expected to help people who historically had limited recourse to the registered design system - including dress designers, furniture designers and jewellers.

In addition, a wider range of items can be registered, including logos, packaging, graphic symbols and, consequently, computer icons. "This aspect is going to be very interesting to people in the animation and computer games industries - and also for the merchandising people," says Myles Jelf, a senior associate at law firm Bristows. "Where you have, say, a cartoon or computer character, you can now make one registration and protect everything."

The requirement that designs must have aesthetic "eye appeal" has been removed, allowing functional items to be protected; and where previously it was possible to obtain protection only for products themselves, now parts of products can also be registered.

A 12-month "grace period" - allowing designers to pilot their designs in the market without prejudicing a subsequent registration - has been introduced; and the scope of protection against infringement has been broadened. The latter comes as a result of a new test, which will judge infringement on the basis of whether or not a competitive design produces "a different overall impression on the informed user". This is widely expected to provide greater protection against infringement.

However, as the same test will establish whether a design has sufficient "individual character" to warrant being registered, obtaining registration in the first place may be harder. "To be registered a product must not create an impression of deja vu," explains Lawrence Smith-Higgins, a marketing executive at the Patent Office. "This is a tougher test than previously."

Just how tough it will prove will become clear only over time, since the meaning of "informed user" and "individual character" will need to be established by the courts.

Last, where previously a registered design was refused only if it had already been publicly disclosed anywhere in the UK, now any matching design disclosed anywhere in the world will prevent an application.

Since the changes, there has been a 2 per cent rise in applications - previously numbers had been falling - and more than 700 designs a month are being registered. "We have seen quite a few new registrations of computer icons - and Arsenal has become the first football club to register its badge of allegiance as a design," says Mr Smith-Higgins.

The new rules enable companies to double, or even treble, protection of their intellectual property rights, says Heather MacRae, an IP lawyer at Marks and Spencer. "We registered the logo for our new Blue Harbour men's wear range as a design; at the same time we applied for a trademark for the name Blue Harbour; and since the logo was created in-house, we also have copyright protection."

This overlapping of rights, however, could lead to conflict, she says, particularly with trademarks: "The point will come when people register designs that someone else has a vested interest in - since there are clearly a lot of logos registered as trademarks. So I can envisage a situation where somebody challenges a registered design on the basis of a registered trademark."

Harmonising national registered design laws was but a first step in a broader European plan. In March, a Europe-wide unregistered Community design right was introduced. Like copyright, this does not require registration; and it covers all 15 member states. However, protection lasts just three years. Next April, a new Community registered design will be introduced, offering a Europe-wide 25-year monopoly. Businesses that would previously have had to register designs in several jurisdictions will enjoy big savings.

Partly intended to help small and medium-sized enterprises, it could prove a double-edged weapon, says Keith Hodkinson, a partner at IP specialists Marks & Clerk. "It is another step in reducing the barriers to SMEs operating on a pan-European basis but it is also going to make it much easier for US and Japanese competitors to get effective protection, so there may well be a significant increase in litigation activity."

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