The shape of Things

Mathew Forde, Partner at Lewis Silkin Ireland specialising in Intellectual Property law, explains exactly why design registration is so important.

designs rights protect the appearance of things, by which we mean the shape, configuration and ornamentation of products or articles.

To enjoy protection, the design must be novel, which means it must not be identical to an existing design already available to the public. The design must also have individual character, which means that the overall impression it produces on informed users must differ from the overall impression produced on similar users by an earlier design.

Registered designs are increasingly being used by businesses and designers to protect their products and related market positions. Design right protection in Ireland is complex and multi-layered. First, there are Irish registered design rights, which last for 25 years. There are also unregistered EU design rights, which last for three years, and registered EU design rights, which also last for 25 years. The key takeaway is that registered rights are generally easier to enforce than unregistered rights and last much longer.

It is important to remember that they do not protect the underlying idea or functionality, which may be eligible for patent protection. For some products, a design registration may be a more suitable, achievable and less expensive option than pursuing a patent; and a registered design enjoys a longer period of protection than a patent.

At an EU level, nearly 100,000 Community Designs are registered each year.

The primary advantage of a registered design right is that it can be used to prevent the copying of your product by an unscrupulous competitor. The copycat designer well understands that, as emotional beings, we tend to make snap judgments as consumers and form quick opinions about the quality and the trustworthiness of objects and our interactions with them. As such, we are often taken in by products whose get-up looks familiar to us but may actually be different to what we think we are buying – perhaps the colours tally, or the shape seems the same, or it looks just like the product we saw at a friend’s house or the one recommended to us online under the tag: ‘people who purchased this also purchased these…’.

In most cases, the registration of a design right will act as a deterrent to the copycat designer. Proof of registration can also be an extremely effective ‘take-down’ tool for quickly removing copycat products from online stores. But retailers need to be alert to product design rights when it comes to their own product selection and protection. What does enforcement mean in practice?

The statutory test for whether a registered design has been copied is whether the competing (copycat) product produces a different overall impression in the minds of the informed user. If the competing product doesn’t produce a different overall impression then it could well be infringing. If it does create a different overall impression, then it probably won’t be infringing.

A useful illustration of what this means in practice is the recent case that came before the High Court in the UK, involving yet another high-profile IP battle between M&s and Aldi. This time, it didn’t involve a Colin the Caterpillar cake but rather whether Aldi’s Infusionist gin liqueur bottle infringed the design of the M&s festive light-up gin. Both products used identically shaped bottles, each underlit and containing gold flakes. Interestingly, Aldi’s bottle incorporated several distinguishing features, including its own logo but these additional features were deemed by the judge to be insufficient to neutralise the design infringement. The judge declared: “going back to the statutory test, it is whether the [registered designs] in suit and the Aldi bottles produce a different overall impression. In my judgment, they do not because of the features that they have in common.”

The significance of this ruling is that products do not have to be almost identical for there to be design infringement. Merely, there needs to be a high degree of commonality in the design features, which reinforces the point that the determining test of whether one design infringes another design is, ultimately, one of overall impression, not exactitude. It should, however, be added that Aldi have indicated that they will be appealing the judgment.

If a new product incorporates standout design features and has enduring sales potential, then protection through registration will always be advisable. Registering a design right will ensure that you retain exclusivity and control of the design of the product in the jurisdiction in which the design is registered. Product designs with protectable distinguishing features will always add value to the product range which, in turn, will enhance the reputational and goodwill value of the related brands.

About the author: For further information on this topic please contact Mathew Forde, Partner at lewis silkin Ireland specialising in Intellectual Property law (Mathew.Forde@lewissilkin.com).

Original designs can help to make a product seem more trustworthy and thereby enhance the expectation of quality, which are major selling points in any marketplace.

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