Design Rights Q&A with Alison Cole - Senior Trade Mark Attorney at Murgitroyd & Company
Why is it that designers find it so difficult to pursue their IP rights?
From my experience in advising clients, as Dids said, they are not fit for purpose:
Public perception and legislative focus for IP protection is primarily in the areas of life sciences, STEM etc. for which patents are hugely prized. It is not aimed at creative industries, yet that is an area of huge growth and transformation – digital fashion, AI, AR/VR, gaming etc. Hard to get patents in these areas; brands can be changed to avoid conflict; so designers are left relying on copyright and design. These largely unregistered / unregisterable rights are so much harder (i.e. expensive) to identify and enforce.
The main reason for registering IP is to protect it as an asset. Since the Hargreaves report, IP has become easier to register, but not to enforce. The increase in private applicants at the UKIPO without legal representation seems like a good thing, however having had no professional assistance or input, applications often contain errors. On the trade mark side there has been an increase in the number of contentious proceedings, often due to avoidable overlaps or misunderstandings. Unrepresented owners do not always end up with the protection they believe they have obtained. This can be prohibitively costly and complex to untangle, which is off-putting for many.
The government’s UK Innovation strategy mentions the importance of design, but makes no mention of how to enforce design rights: “the IPO will support growing and recovering businesses to secure and manage new IP rights”. This is understandable since that is not UKIPO’s remit, however without enforcement registrations become pointless and, ultimately worthless.
Government strategy surrounding IP is largely aimed at existing companies / management – “Innovation is the lifeblood of businesses”. There are many initiatives for attracting and retaining diverse talent, encouraging R&D investment etc. Where design is considered, it relates primarily to designers employed by big business – makers of racing cars, vacuum cleaners etc – who have the resources to obtain and enforce IP. However, the majority of designers are lone, micro or SMEs without these resources. We risk missing a trick - in the same way as overnight success comes from years of blood, sweat and tears, successful UK companies come from lone, micro and SME innovators.
Finally, there is a huge lack of publicity as to what resources are available: low cost / free advice from IP professionals – CITMA clinics, IP Pro Bono (20yrs experience, only heard about it last month) – and from other organisations such as UKIPO road shows, ACID, Diet Prada, Queen’s Award for Excellence.
Why is there resistance from the UK Government to introduce criminal provisions as a real deterrent to IP infringement for the intentional infringement of an unregistered design?
Not sure. I have heard that it is considered that it might “chill innovation”, but it already exists for registered designs and copyright. This creates the nonsensical situation whereby singers, song writers, authors have stronger IP rights than designers.
Why is a 2D drawing, plan or design different to when it turns into a 3D product in terms of protection?
Again, there is no consistency in laws that protect creators. Basically, it doesn’t make sense!! A design drawing may have artistic copyright = criminal protection. 3D resulting product – unregistered design = no criminal provisions. Furthermore, the length of protection varies enormously: copyright grants protection for 70 years in the 2D work, whereas registered designs are protected for 25 years and unregistered designs far less.
Shape and configuration = 15 years, appearance = 3 years
I understand that since Brexit, designers lost automatic protection for unregistered designs in EU27. Why is this so important?
Although provisions were made to safeguard existing EU unregistered design protection in the UK post Brexit, the main concern now is the lack of reciprocal rights with the UK’s main trading partner, the EU: product designers in current trade negotiations are disadvantaged compared to those who rely on copyright - first disclosure in the EU does not establish a Supplementary Unregistered Design right, however, it may destroy the novelty in that design, should you later seek to claim UK rights. Similarly, first disclosure in the UK may not establish a Unregistered Community Design and could destroy the novelty in that design, should you later seek to claim EU rights.
This causes big potential problems for designers, for example, say launching a collection in Paris first as this would mean losing rights in the UK. ACID and others are pressing the government to reopen talks on simultaneous publication. With technology that is now available, it must be possible to offer all those within the EU the opportunity to publish at the same time.
We’ve heard that ACID is producing a Designs and IP Charter, what could this mean to UK designers.
You have heard from Dids on this, and I know that ACID has asked for government support for the Charter. It would mean that original designers could stand up and be counted and become part of declared corporate social responsibility. If they get a critical mass, it would also highlight those NOT prepared to sign and bring necessary publicity to design rights.
If this conference is about the future of IP, what design law reforms are feasible?
Technology is levelling the playing field for innovators and creatives (e.g. route to market, lowering advertising spend, tracking field to fork and authentication of supply chain), but law needs to adapt too. Currently there is no specific IP legislation covering rights created by way of AI, AR/VR, 3D printing, digital fashion etc. We are bending existing laws to try to deal with issues which are arising.
In respect of designs, we are long overdue an overhaul of very complex laws. Consistency across all IP, including criminal provisions for intentional unregistered design infringement, is needed. Together with a national ACID Designs and IP Charter, this could pave the way for designers to be more supported.
Also trade mark law (appeal to Tim Moss) – bring back relative grounds examination – support SMEs’ rights.