Judging by the sheer number of queries ACID dealt with at the one to one IP design clinics running throughout the show there is clearly a need to provide as much legal, practical and commercial education and advice as possible. Several exhibitors took advantage of ACID’s on the spot ‘Mediate to Resolve’ service with alleged copying complaints. These were dealt with quickly and no further legal action was required, proving, yet again, the effective use of mediation as a real alternative to litigation.

A quick reality check underlined that copying is unfortunately alive and well, but businesses need to establish what Intellectual Property rights they actually have before they can take any action and should always take advice from a specialist in the area before they do so. Jo Crouch of supporting ACID Accredited Law Firm DMH Stallard sets out a quick guide below on some of the rights and issues of which businesses need to be aware. IP law is complex and the following is not intended to be an exhaustive description of the rights. In each case where a question of copying arises individual legal advice should be sought. In particular, there are certain conditions of subsistence which apply to each of the rights and special rules apply to designs which have been commissioned or licensed.

UK Unregistered Design rights

No need to register, as the name suggests! However, the design must be original and it must be recorded in an original signed and dated design document. This right usually lasts for ten years from the first marketing date of articles made to the design. ACID members may send copies of their signed and dated drawings to the free ACID Design Data Bank. 3-dimensional features of the design of industrial articles are also protected, whether aesthetic or functional. However, rights holders should note that surface design is excluded from the scope of this right. Take, for example, a handle on an umbrella. The handle can be protected by unregistered design rights provided that the design is original and not already commonplace. However, any surface decoration on the handle would not be protected by the UK Unregistered Design right. A rights holder must also show copying has taken place in order to prove an infringement.

Community Unregistered Designs

Again no need to register! Limited protection for designs is also available throughout the European Union under the Community Unregistered Design right and lasts for only 3 years. In order to gain protection, a design must fulfil the test for absolute novelty and have individual character. Unregistered Community Design right comes into existence automatically when a design is first made available to the public within the EU. A rights holder must prove copying in order to succeed in an infringement claim and the right lasts for only three years from the date when it first became available in the EU.

Therefore, whilst it is a useful right, especially for the protection of designs with a limited life span in the market place, it is worth considering registered rights for products with longer shelf-lives as these rights provide much stronger and longer-lasting protection.

Registered Designs and Community Design Rights

Registered design rights protect the appearance of items such as, for example, jewellery, clothing or furniture, in so far as they meet the tests set out below. As the name suggests these rights require registration with an official body namely the Designs Registry at the UKIPO for UK Registered Designs and OHIM (the Office for Harmonization in the Internal Market) for Community Design rights in order to come into existence. www.ipo.gov.uk www.oami.europa.eu

To be considered for registration designs require absolute novelty and individual character. In essence, a design will be considered a ?new design? if no identical design (or no design whose features differ only in immaterial details) have been made available to the public before the relevant date. The element relating to ‘individual character’ will be satisfied if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has previously been made available to the public. The Registered Design lasts for a maximum of 25 years from the date of the application to register.

Copyright

Copyright protects original literary, dramatic, musical or artistic works. The author must have created the work through their own skill, judgment and individual effort, and not have copied it from other works. Copyright does not require registration in this jurisdiction but will only subsist if the work is recorded, in writing or otherwise.

Copyright lasts for a set period, most often the life of the author plus 70 years from the end of the calendar year of their death. No formalities need to be observed in the UK for a work to receive copyright protection. The primary purpose of copyright law is to reward authors for the creation of original works, that is, works where the author has expended independent effort to create the work. It is very important to appreciate that copyright law is intended to prevent copying but does not provide a monopoly. A similar or identical work may already be in existence but copyright may not be infringed if this has not been copied. By contrast, a registered design creates a monopoly and it is immaterial whether or not it has been copied in determining whether infringement has occurred.

Practical Advice

To ensure that IP rights are fully protected:

• designers should sign and date all of their documents.
• keep records of the design document and the design process with the date of the first marketing of the articles, which is often referred to as the ‘Design Audit Trail’. (This is invaluable evidence in any subsequent legal action).
• If you don’t want to be copied, – say so! and there is no better way than by using the ACID logo on websites, marketing material, design drawings, product labelling etc.

Members can take advantage of the ACID Design Data Bank which they are entitled to use free of charge throughout their membership. Call the ACID helpline for further information 0845 644 3617. The ACID Design Data Bank Officer, Sheila Carter, will file and save these designs in the Data Bank in order that ACID, as an independent impartial body, can verify the date on which the design was first made known.

It is vital for businesses to appreciate that the ACID Design Data Bank is not the same as registering your rights legally, but merely provides a helpful service for members to ensure that safe copies of their designs are stored and dated independently.

Groundless Threats

Individuals must be very careful when approaching potential infringers (as one might be tempted to do at an exhibition) and asserting their rights prior to obtaining legal advice. Certain provisions in the law relating to ‘groundless threats’ mean that any person who threatens another with proceedings for certain IP infringement could face action being brought against them if they cannot prove that the rights that they are asserting are valid and owned by them or the action they are taking does not fall within one of the exceptions. Objectively, a threat is made if what is communicated is understood by the ordinary recipient as being a threat of infringement proceedings. However, mere notification that an IP right exists or is registered does not amount to a threat of proceedings. It is usually difficult for the lay-person to make that distinction without taking specialist legal advice.