DESIGNS: TO REGISTER OR NOT, THAT IS THE QUESTION!

Dids MacdonaldWhy should designers register their designs? There is little commercial value in shouting that you’ve got a good idea, or the latest new design “gismo”, but if you have numbered design registration, stating that you effectively own the design, then you have a tangible, tradable IP asset. Registration details included on marketing literature and websites may also act as a strong deterrent against copying. If a designer is unlucky enough to be copied, but has a registered Community design (RCD), it is much more cost and time effective for an IP lawyer to write a powerful letter before action which will be more difficult to legally challenge. Investors, too, are more likely to be persuaded if they can see tangible evidence of tradable IP assets. Another key benefit of an RCD is that, for a small sum, publication (public disclosure) can be delayed (in the UK by 12 months and in the EU by 30 months) so that competitors cannot see a new design/design range before its official launch. This gives originators a clear and fair lead in the marketplace plus the added protection assurance of an RCD.

Is RCD cost an issue? How can unregistered rights be used effectively to decide on registration?

Many micro enterprises and SME’s find that registration is still too expensive. ACID’s advice in most cases is to always try to register new designs. However, if cost is an issue, there is a useful option of a year’s grace period to register allowed by OHIM. Designers can therefore, rely on unregistered rights to test the market during this period and then invest in the registration of any products identified as clear market leaders. However, there is a down side. Those who seek the fast track to market through IP infringement may seize on a new design and register it themselves. This can lead to a messy legal debacle to prove clarity of ownership, especially if an alleged infringer’s registration in another country.

Are designers generally aware of the benefits of design registration?

Design is everywhere; everything we use has gone through some sort of design process in its creation to a greater or lesser degree. Yet despite designers having access to the relatively new registered Community design (RCD) (introduced in 2003) there has been a slow uptake of registrations. The Office for Harmonization (OHIM) up until this year held only 400,000 registrations. So across 27 member states, over 7 years, this represents an approximate annual average of 2116 design registrations per country. To put this into perspective, in the UK, for example, there are 232,000 designers. The good news is that EU design registrations are finally picking up and increasing by 80,000 per year (or an average of an additional 2962 per year, per country).

Does this mean that the RCD benefits are being more widely publicised and acknowledged or that infringements are on the increase? Or does it mean that designers are finally waking up to the fact that registration is a key component of a healthy intellectual (IP) strategy? Maybe it is a combination of all these factors? Why don’t designers register more, is it still too expensive? At €350 per single design, maybe it is, although there are reductions for volume.

National registrations granted in the UK amounted to 2976 in 2008 and 2111 in 2009, a decrease of 29.1%. However, on the other side of the coin, for those relying on unregistered rights,  ACID’s Design Data Bank receives approximately 30,000 designs per year indicating, that by the sheer volume, many of the UK’s designers are still relying on unregistered rights. If a designer relies on unregistered rights, by creating an independently held IP audit trail this provides compelling evidence and can reverse the burden of proof against an alleged infringer. Out of ACID’s 400 settlements, the majority have been settled by designers relying on unregistered rights.

The UK used to be a nation of shopkeepers and manufacturers. If a shopkeeper’s stock is stolen, they can’t trade. Now the UK is a knowledge economy. If an IP originators tradable knowledge is stolen, their capacity to continue to market and sell designs may be seriously eroded. EU and National policy makers should seriously consider reducing registration fees and making cost and time effective legal redress a priority in a significant policy shift change. Introducing accessible IP enforcement with meaningful exemplary damages wouldn’t be a bad start.

© Dids Macdonald is the Chief Executive of ACID (Anti Copying in Design)

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