FRKelly Designers Handbook
Design and other intellectual property rights
Design and other intellectual property rights
In order to obtain the broadest and most robust protection for the intellectual property rights in a product it is often advisable to seek more than one form of protection. Design rights can be used in tandem with trademark, copyright and patent rights to provide the most effective protection possible. Design and Trademark The shape of a product Intellectual property authorities have long been concerned about the possibility of paralysing the market by allowing a product shape to be registered as a trademark, creating a monopoly over it. As a result it is very difficult to establish that a trademark in the form of a shape has distinctive character. In addition, where the shape of a product is necessary to achieve a technical objective or results from the nature of the goods it cannot be registered as a
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trademark. Similarly a shape cannot be registered as a trademark where it gives substantial value to the goods in question. Registering the shape of product as a design is therefore highly recommended. A design application is not examined for distinctiveness before being registered and is presumed valid; it is a much easier route to effective protection for the shape of a product.
There can be significant overlap between the field of copyright and the field of designs, given that most designs start their life on the drawing board or the computerised equivalent
different overall impression on the informed user’. There is not however any requirement to prove likelihood of confusion between designs. An infringing mark must be detrimental to the primary function of the trademark i.e. to guarantee consumers the origin of the goods. There is no equivalent requirement with logos protected by design rights.
Logos Design protection is increasingly being used a way to enhance the protection afforded to logos. This is reflected in the amendment to the Locarno classification in 2009 which added ‘logos’ in a new Class 32 alongside graphical symbols, surface patterns and decorations.
Perhaps most significant is the fact that the scope of protection afforded by registering a logo as a design is not limited to specific products or services. This was confirmed by the decision concerning the ‘Logos Midas’ case concerning the registration of the word Midas. Essentially a design owner can therefore act against a similar design logo on any goods, not only similar goods and services.
The scope of protection of a design is any design that does not ‘produce a
Design and Patent A patent protects a technical
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invention. As the example of the DYSON vacuum cleaner at the start of this work demonstrates, the same product may have overlapping protection under the patent and design systems. For example, patents may be applied for to protect the “cyclone” technology used to create a vacuum and separate the dust from the air stream, to protect a novel method of bonding two plastics together, or to protect the mechanism of a quick-release coupling between a hose and an attachment. Design rights could exist in parallel for the overall shape of the unit, for the shape of the ribbing of the hose, for the colour scheme applied to the different components, and for the contours of the handle. In general there is no issue arising from the overlap of these rights since the patents are directed to purely technical aspects while designs are for the non-technical aspects of appearance.