In the first action, despite denying design infringement, Dean Fairhurst of DF Furniture Ltd has settled an alleged intellectual property dispute prior to going to court and paid legal costs to bespoke kitchen company and ACID members Chiselwood Ltd and has issued the following apology:

“Dean Fairhurst of D F Furniture Ltd used drawings created by Chiselwood Ltd (without permission) to build a kitchen to a specification set out in the drawings. D F Furniture admits that it then used photographs of this kitchen in promotional material in its brochures and on its website. All such images have now been removed. D F Furniture Ltd apologises to Chiselwood Ltd for the use of its drawings and undertakes not to use the photographs, or the drawings, in any capacity whatsoever at any time in the future.”

Dids Macdonald, Chief Executive of ACID said, “Increasingly companies are taking action against this type of unauthorised use of kitchen design drawings and specifications and Chiselwood are sending a crystal clear message within the UK kitchen industry that they will take any potential infringement of their designs seriously”.

Macdonald, recently seen on BBC’s CrimeWatch discussing the serious issues of design and copyright infringement, continued by saying, “Following a recent precedent design law judgment, designers like Chiselwood who win awards and media accolades, will now have a much stronger case as judges will now consider these in determining whether designs are “novel” and have “distinctive” character – a key factor in determining design rights”.

Chiselwood were awarded the title National Kitchen Designer in 2005 and received the KBSA’s prestigious National Design Innovation Award in 2006. Managing Director, Mel Holliday, discovered the alleged infringement of their work on reading a national kitchen magazine in May 2007 and immediately recognised the design of a featured kitchen as one that Design Director, Martin Holliday, had originally produced for a client in 2006.

A former Director of DF Furniture Limited had visited Chiselwood’s Lincoln showroom twice in 2006, posed as a potential client and then returned for a presentation of the original drawings which he then took away with him. This individual was then featured as the proud owner of the new kitchen in the national magazine article in 2007.

“Design creativity and the highest quality of product and service are central to the ethos and success of Chiselwood. Significant investment is made each year in the creation and marketing of new designs and we will always protect our hard work,” commented Chiselwood Founder and Design Director, Martin Holliday.

The second action concerned the unauthorised use of photographs of Martin Holiday’s 2005 National Kitchen Designer Award winning kitchen created for Chapel Kitchen. As a result of the award the Chapel kitchen was photographed by a Mr Darren Chung on behalf of a the award organiser. Unbeknown to Martin, Mr Chung submitted the photographs to a photo library which made the images available for sale.

Whilst Chiselwood did not know of this activity they were extremely surprised to see the 2008 Brochure and website www.thedoormaker.com and a picture of the Chapel kitchen taking centre stage. The pictures were used to sell a range of doors but no mention was made in any of the literature of the fact that this was not their kitchen. Chiselwood had an excellent case in passing off. Niall Head Rapson of ACID Accredited Law Firm, McDaniel & Co said, “This is a classic example of a speedy result following a letter before claim – the offending photographs were removed and the brochure is being reprinted, I don’t think this will happen again!”

GREY AREAS CLARIFIED WITH GROUND BREAKING COURT DECISION Andrew Lee of McDaniel and Co looks at a recent case, Flashing Badge v Groves, to illustrate the importance of understanding exactly how various laws can protect graphic designers and Section 51 of the Copyright Designs and Patents Act 1988 is an interesting piece of legislation directly affecting ACID members when they create new products. Often these products will have 3D features (shape) and also surface patterns or decoration applied to the product. What is the law? Section 51 (1) states: It is not an infringement of any copyright in a design document or a model recording or embodying a design for anything other than an artistic work or a typeface, to make an article to the design or to copy an article made to the design. Section 51 (3) clarifies sec 51 (1) states:“Design” means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article other than surface decoration. “Design document” means any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise. Confused, then don’t be! In the Flashing Badge (FB) and Groves (G) case, FB owned the rights in a range of badges, each featuring a graphic work such as “Birthday Girl” (see above). The shape of the badges followed the outline of the graphic work. If the graphic work were removed, the shape of the badge would remain the same. Therefore, the badges comprised aspects of design right (the shape) and also copyright (the graphic works), however both were recorded in the same design document. G imported and offered for sale almost identical badges. FB commenced proceedings for copyright infringement and the issue of Section 51 arose. FB submitted that section 51 was the interface between design right and copyright and it was necessary in considering the defence under section 51, to distinguish between the copyright and design right in question even if recorded in the same design document. However, G claimed that, although the graphic works were artistic works, section 51 provided a defence as they were part of the design for a badge which was not itself an artistic work. As they were part of the design document for the badge, Section 51 provided a defence.

The High Court held:

• Each drawing was a ‘design document’ within the meaning of section 51(3). However each consisted of two designs. Firstly, the design of the shape of the badges and secondly the graphic works applied to the badges.
• Section 51 was irrelevant in respect of the graphic works, because they were for an artistic work, but did apply to the non artistic work i.e. the badge shape.
• It could not be said that the graphic works could only exist as part of the badge. They could exist separately and be applied to other products (i.e. the side of a mug). Therefore, Section 51 afforded no defence to the copyright claim.

The decision is useful as designers can safely record their designs in one document or model, provided that any surface pattern or decoration can exist separately from the product itself, without section 51 providing a defence to infringers.

ACID members Innermost www.innermost.co.uk started their award winning company in 1999 – their strategy is to build a strong brand by collaborating with some of the best design talent in London concentrating on cutting edge lighting and homewares.

IP protection is key and they have used the ACID logo to maximum effect on their website. The powerful ACID logo acts as a burglar alarm sending out a warning message to copyist that IP infringement will not be tolerated. The logo, combined with a strong anti-copying statement – which in Innermost’s case, has been translated into 15 different languages (available through ACID) ensures that design thieves are made aware that the brand owner(s) know their IP rights. The ‘Member of ACID’ logo has become a recognised symbol of deterrence and is licensed out free of charge exclusively to current ACID members for use on their marketing material and websites.

INTELLECTUAL PROPERTY – OBTAIN, EXPLOIT OR ATTACK?  

Experience of IP performance and the consequences of IP infringement are generally known by those who battle IP theft in world markets but a new Global Intellectual Property Index, underpinned by statistical evidence provides a useful assessment of the best and worst jurisdictions to obtain, exploit, and attack particular types of IP. The index has been launched by Taylor Wessing (TW) in conjunction with Managing Intellectual Property. Michael Frawley Managing UK Partner of Taylor Wessing,  (UK) said, “IP law is developing rapidly in order to meet the challenges of the ever increasing change in technology and no jurisdiction can afford to be complacent about its legal system for IP.” 

UK RANKS NUMBER ONE IN IP

Designs seems to have been excluded (yet again!) in any analysis of IP rights, however, in focusing on the Big 3, trade marks, patents and copyright, the general level of country performance is fairly clear. (Through ACID Lobby, ACID is assured by the UK Intellectual Property Office (UKIPO) that more acknowledgement of “Designs” as a legitimate IP right will be given in future!)

The index is based on TW’s analysis ranking 22 jurisdictions in order of IP competitiveness (1 being excellent – 22 bottom of scale) with the creation of 5 tiers which can be seen by clicking below.

Global IP Performance Chart 

The new president of WIPO (World Intellectual Property Organisation) is a highly respected Australian within the world of IP, Francis Gurry – let’s hope that a down under, down to earth approach to the problems that the world faces through blatant IP theft will receive a no-nonsense practical approach, something the Australians are fairly good at! Francis Gurry was welcomed by Jeremy Phillips of IPKat http://ipkitten.blogspot.com/search?=Francis+Gurry  as, ”A sincere and committed IP enthusiast” and looks forward to his reign. Gurry is also the founder and head of WIPO’s Arbitration and Mediation Center.

Some further observations from the report: 

• Two thirds of respondents say that the time their organisation spends dealing with IP has increased over the past 3 years.

 

• China is improving almost monthly as it becomes more aware of the value of IP and the need to protect its own IP. Similarly Brazil has improved its IP enforcement efforts.

 

• Although the UK is ranked first, it is a high cost litigation jurisdiction. Unsurprisingly given the low-cost, quick and effective ex parte interim junctions available in Germany in relation to enforcement, Germany scored higher than the UK.

 

• For the third time in a decade Russia is undergoing an overhaul of its IP laws. 

 

Left Globe version of the Gola ‘Stripe’ (shown right in black and white)

Trade Marks – Training Shoes: side stripe design was fully capable of operating as a trade mark. The case of Jacobson and Globe addresses the issue of the extent to which a mark used on an item is a mere matter of design rather than a genuine badge of origin, in this case, specifically in relation to the designs and stripes used on the side of training shoes. Jacobson (Gola) argued that the defendants (“Globe”) had infringed its registered trade marks (UK and CTM) in its Gola “Wing Flash” logo, by using the logo on Globe shoes, and were also liable for passing-off. Globe denied these allegations, and counter-claimed that the registrations of the Wing Flash logo as trade marks were invalid.

Jo Crouch of DMH Stallard considering the Judgment said, “Globe argued that the Wing Flash logo was not a sign capable of distinguishing the goods of Jacobson from those of other undertakings, that the logo was devoid of any distinctive character, and that the logo was a sign or indication which has become customary in the bona fide and established practices of the trade. They also pleaded no infringement, on the basis that their shoe side design was not confusingly similar to the Gola Wing Flash trade marks.”

On validity, “Globe argued that consumers are likely to consider stripes on the side of trainers as being nothing more than design features rather than brand logos. The Court disagreed, finding that the Wing Flash logo was an unusual and inherently distinctive design, and fully capable of operating as a mark denoting origin. The Court rejected the invalidity counter-claim.”

On infringement, “The Court saw survey evidence on the issue of confusion. One group of participants was shown photographs of a Gola shoe, with the Wing Flash logo, but all other Gola marks removed. A second group was shown photographs of a Globe shoe, with the Globe’s side design, but all other means of identification removed or obscured. The participants were asked to look at the photo of the shoe and to state whether anything on it indicated the brand to them. If the respondent answered affirmatively, they were asked what it was about the shoe that indicated the make, and to name the brand if they could.”

11% of the first group correctly identified the “Gola” brand. In the second group, a small number (2%) wrongly identified the Globe shoe as originating from “Gola”.

The Judge agreed that the expert evidence and the witness and survey evidence indicated that there was a significant likelihood of confusion in consumers caused by the similarities in the Globe side design. He also agreed that Jacobson had made very extensive use of and had heavily promoted the Gola brand and logos and undoubtedly enjoyed a powerful reputation in them. The Court was therefore satisfied that Jacobson has established its claim for trade mark infringement, together with passing-off.

ACID, (Anti Copying in Design) has formed a trade association partnership with the Lighting Association (LA) to help raise the profile and value of IP among its members.

This move is part of an on-going campaign by ACID to actively support trade organisations pan industry. Through IP education – how to protect your designs and how to integrate IP as part of a corporate or marketing strategy – ACID will advise LA members on creating a safe trading environment by safeguarding their design equity when tendering or pitching for business.

Says Peter Hunt, CEO of the LA, “We are committed to raising awareness of UK design and protecting it within the lighting industry. As both a designer and manufacturer I am acutely aware of the issues surrounding IP theft and I am committed to encouraging all our members to become IP aware. We are delighted to be joining forces with ACID – now we can offer our members a real chance to develop their own IP strategies.”

Adds Dids Macdonald, CEO of ACID, ‘The design and interiors industry is supported by influential trade organisations including the LA – the second to take advantage of ACID’s Trade Associations module. The module is bespoke according to the market sector and includes a discounted group membership fee, seminars, tailored IP advice through regular web and newsletter features, standard tender agreements, and IP clinics plus over 30 ACID membership benefits including IP legal advice and the use of the free ACID design bank. I strongly advise any trade association who is committed to design protection and IP education to talk to ACID”.

ACID will be present at the Lighting Association Awards on June 18th 2008 and will start its series of IP seminars with ‘DESIGN – Protect it, or Forget it!’

Madeleine has created ranges of Chandeliers where the main features are the use of recycled teacups and lanterns made from recycled Jelly bowls. She is an innovator in this field and has had a number of commissions based on the design. So it was with great surprise and disappointment that Madeleine noticed someone offering identical items for sale on the web site www.beshlie.co.uk

The UK has a wonderful depth of creative innovative design – none more so than ACID member Mike Payne.  Mike’s new company, Charlie’s Ark Ltd, will be launching his great card and plush range in all Clintons cards shops in July – watch out for them – and do view the charming videos through the links below.

http://www.mikepaynestudio.com

http://www.charliesark.co.uk  

http://www.youtube.com/watch?v=nT0FJ79Qphg

http://uk.youtube.com/watch?v=2lq1BEoVnLc#GU5U2spHI_4

LAST CHANCE TO BOOK YOUR PLACE!

Come to another of ACID’s IP seminars at the UK IP Office in London on June 24th and hear about some of the practical, legal and financial aspects you should consider when exploring all the opportunities offered by licensing.

Furniture and product designer Damian Evans will take you on a fascinating journey through his forays into licensing with major iconic brand names such as Bliss, Joseph Joseph, Garden Trading, Gruppo Confalonieri, Hahn Trading, T & G Woodware, Bisque Radiators, Philippi (Germany) to name but a few.

ACID Accredited Lawyer Patricia Jones will take delegates through some of the legal hoops to consider whilst Ranjit Auluk will look at some of the financial aspects, above all to ensure that there are auditing procedures in place to ensure you get all that you are entitled to. Dids Macdonald, ACID CEO will run through some of the key elements of ACID’s industry standard licence agreement, not least highlighting a provision which provides a level playing field between designer and manufacturer to ensure that design integrity is not lost through manufacturing restrictions.

Damian Evans, talking about licensing explains, “Ideas are the life blood of our industry. Using good, intelligent design to help bring those ideas to fruition is an essential part of the DNA of modern manufacturing and commerce. With the increasing competition from China, India and countries like Brazil, creating a stream of innovative, stylish and commercially savvy products is one way of keeping many UK companies with healthy bank balances. The design process can be as complex or as simple as you wish. However, you get what you pay for and like any other part of business, everyone has to watch their overheads. This is one of the reasons why licensing is a useful tool to consider. A license can allow the manufacturer to develop more products as the designer is taking part of the risk with the manufacturer, in exchange for the potential of making more money than they would with a fee and therefore initial costs are kept lower, so if the product fails for some reason, less is lost.”

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For more details of how to reserve a place contact Annette Rigby