Dear ACID members
Following the Prime Minister’s announcement of an Intellectual Property review to be undertaken by Professor Ian Hargreaves, I wrote to him welcoming this initiative. I explained that ACID members play an important role in creating IP and providing employment for many thousands of people within the creative industries and that ACID’s main objectives are to assist our members in the protection of their IP rights through education and awareness, prevention, deterrence against infringement and fast track support when their rights are infringed. I reminded him that, through ACID LOBBY, we are determined to ensure that design’s voice is heard loudly and clearly within IP policy.

In my letter I said that we are looking for a more level playing field for micro enterprises and SME’s to access a cost and time effective framework to address the growing problems of infringement, much of it emanating from China. China is a difficult country in which to do business and many find their IP is seriously at risk from local partners with little hope of redress because it is so difficult to take legal action in China.  For example out of the UK’s 250,000 designers 87% employ less than 10 people.

I outlined our disappointment with the last IP Review – the Gowers Report, whose mandate was to ensure that all intellectual rights were fully represented, to find that there was so little reference to design issues. The same was true of SABIP’s research documents where there was absolutely no mention of design. I therefore hope that Professor Hargreaves will ensure that design’s voice is heard within the consultative process.

Graph showing the word count for IP terms contained within the Gowers Report

Members may remember that Nick Kounoupias and I recently met with John Alty, CEO of the UKIPO, to discuss the inconsistencies which exist with regard to the protection of design rights in the UK.  Unlike copyright infringement, design right infringement is not a criminal offence and can only be dealt with by way of civil proceedings.  This gives rise to anomalies and inequality of treatment which are very damaging to hundreds of small businesses and designers across the UK and restricts the level of legal protection and support they can expect to receive.  I very much hope that the independent review body will ensure that this disparity is rectified to ensure that designers are properly able to protect their intellectual property.  Without this much-needed reform, the UK will be left with a damaging two-tier system of IP protection where infringement of one sort of IP is regarded as less serious and harmful than another.

In a disappointing response to ACID’s petition for unregistered design infringement to be afforded the same privileges as copyright infringement I was surprised by the Government’s claim, “That unlike copyright and trademarks, design right infringement can often be inadvertent!” ACID disagrees strongly as do many members, including Patrick Heeley, Managing Director of ACID member Villeroy & Boch who commented “I was astonished by the Government’s clear lack of concern in this issue, and the reference to design infringement often being ’inadvertent’. It is a disgraceful dismissal of the problem.” Villeroy & Boch employ 250 people in the UK.

If you would like to contribute to ACID’s response to the above IP Review or have any comments about Government’s statement that they believe most design infringement is “inadvertent”, I would be delighted to hear from you.

ACID is delighted to announce that it has adopted as one of its 3 charities, FIT The Furnishing Industry Trust. www.fi-trust.co.uk. FIT is an independent charity enhancing the lives of those who are working, or have worked, in the furnishing industry and who are now facing financial hardship or a personal crisis. They provide grants for desperately needed one-off items and weekly grants for individuals, couples and their families suffering ongoing hardship. The money they give transforms lives for people and their families in the Furnishing Industry.
Despite all the challenges that the current economic weather throws at us, I hope that 2011 will be very rewarding. My huge thanks, as ever, go to the terrific ACID team headed by Jane Stephenson, to our Accredited lawyers, McDaniel & Co & DMH Stallard, our ever growing mass of supporters and, of course, to you, for continuing to support the work we do.

Wishing you all a Merry Christmas and Happy New Year.

Dids
Dids Macdonald, CEO

Whether you are a contract buyer for a multiple, retail or independent store there is no doubt that the exhibition venue is a unique environment to view new and existing products under one roof. Whilst there has been a significant upturn in online buying and selling, nothing replaces the look, touch and feel of the real thing! So intellectual property (IP) planning for exhibitions is critical. If exhibitors get their exhibition strategy wrong there will be little return on investment. If, however, you get it right you can establish relationships, consolidate the intellectual capital in your brand and communicate your anti copying policy – essential for those whose reputation and future depends on original design. ACID Accredited Exhibitions have a positive policy of encouraging and promoting original design and the respect for intellectual property.

Andy Vaughan, Interiors Event Director says, “Having been an ACID accredited event for many years now, Interiors Birmingham has a zero tolerance policy to design infringement within the industry and therefore fully supports ACID’s aims and mediation protocol to help to combat these issues.”  Louise Young, Managing Director of Spring Fair says “We understand the importance of IP to our customers and, as part of Emap’s terms and conditions, all exhibitors agree not to infringe the rights of any third party.  On the rare occasion where an infringement has been brought to our attention, the product is removed from the stand.  In cases where an exhibitor believes there has been an infringement we will always suggest that in the first instance they seek specialist advice.”

In 2010 ACID announced that IP Steering Groups had been created to work with ACID Accredited Exhibitions in raising awareness of copying issues on the exhibition floor.  These groups consist of ACID Members, small and large, who exhibit regularly.  ACID recently asked for their views on the Government’s response to ACID’s No. 10 petitions and also to the announcement, by David Cameron, of an Intellectual Property Review for 2011.

The Government response to ACID’s petition to bring design right infringement in line with other IP rights stated, “That unlike copyright and trademarks, design right infringement can often be inadvertent!” ACID disagrees strongly, as do many including ACID member Rodney McMahon, Managing Director of Morgan Contract Furniture. Commenting on the Government’s response Rodney said, “As a British manufacturer of design led furniture within the contract sector employing 60 people, the intellectual property we create is the lifeblood on which the future of our organisation will rely. On a personal level, having been the recipient of intellectual property infringement on a significant scale, I find the Government’s statement that design infringement may be inadvertent is way off the mark and misleading.  As Chairman of the British Contract Furnishing Association the majority of our 200 members would also confirm that it is rare to experience inadvertent copying. For most, IP infringement is blatant and deliberate. I welcome the announcement of David Cameron’s recent review of IP and hope that there will be a real commitment to provide a cost and time effective means of IP dispute resolution to meet the needs of business today. The British contract furnishings industry contributes £2.2 billion to the UK’s GDP and employs approximately 25000 people.”

Echoing Rodney McMahon’s reaction, Tim Hudson, MD of Frank Hudson Ltd. who will be showcasing their new Gothic bed design at Interiors,  said, “I am, quite frankly amazed at the Government’s claim that, design right infringement can often be inadvertent. In our experience it is generally deliberate. One of the reasons we are passionate about protecting what sits under the Frank Hudson brand is that, over the years, we have traded very successfully on our knowledge, craftsmanship and intellectual property and we will do everything to ensure our brand is not eroded by cheap look alikes of our design led ranges”.

Patrick Heeley, Managing Director of ACID member Villeroy & Boch, exhibitors at Spring Fair,  commented “I was astonished by the Government’s clear lack of concern in this issue, and the reference to design infringement often being ’inadvertent’. It is a disgraceful dismissal of the problem.” Villeroy & Boch employ 250 people in their UK division.

Penny Laughton, Marketing Director of LSA, also showing at Spring Fair,  employees 55 people in the UK, said, “Like many other ACID members we welcome David Cameron’s announcement of an intellectual property review and hope that real progress will be made to improve access to cost and time effective solutions to address IP infringement. Contrary to the recent Government response to ACID’s petition, we find that copying within the industry is more often blatant and deliberate rather than inadvertent and hope that this issue will also be covered in the IP review.”

Given the current disparity between intellectual property rights, what do ACID Members put in place to protect their designs when they are exposed at the exhibition venue? One ACID member who puts intellectual property high on the list of priorities is Ray Davies of Bentley Designs, who are showing their DAKOTA bedroom collection at Interiors. Along with 80%+ of all ACID members, Bentley Designs send all their designs into the ACID Design Data Bank before exhibiting to ensure that an intellectual property audit trail lies behind each and every piece of designed furniture. In this way, it can demonstrate all the different stages between idea and eventual market place, essential to Bentley’s IP armoury whilst communicating a strong anti copying message to the sector.

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.

ACID member Alstons Upholstery is a regular Interiors exhibitor and their Design Director Matthew Cave said,” I would like to stress the importance of making an application for a “Registered Community Design” which may initially be costly, particularly if there are several products involved, but it’s the only way of ensuring your products are fully protected.”

The UK used to be a nation of shopkeepers and manufacturers (although we are still the 7th largest manufacturer in the world!). 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.

Martin Moore & Co. is a specialist kitchen design and fitting company with several showrooms around the UK. In a joint project, they had agreed to use their design and expertise to create a bespoke kitchen especially for a photo shoot by one of the leading names in solid fuel ovens, AGA. The deal was that Martin Moore would provide a free kitchen for AGA so that the company could promote its ovens in a prestigious and design-led kitchen stage set. An express part of the agreement was that the photographic images could only be used by AGA with permission from Martin Moore.

Martin Moore was surprised, therefore, to see exactly the same image of their kitchen with the AGA oven on the website of a competitor kitchen manufacturer, J John D W Wood. To the consumer this could have provided confusion as to who had designed the kitchen and it would not be unreasonable to assume that the AGA oven was housed in a J John D W Wood designed kitchen. This prompted Martin Moore to instruct ACID Accredited law firm, McDaniel & Co. to send a letter before action to J John D W Wood who removed the offending photograph immediately.

Martin Moore says: ‘’ We were surprised to see our kitchen on another supplier’s web site. They were only claiming to represent Aga, but were most definitely giving the impression they had made the kitchen. Thanks to Acid membership and some excellent advice, we were able to have this misleading advertising removed. We will vigorously pursue those who infringe any of our design rights and our IP ‘’

Andrew Lee, a lawyer from McDaniel & Co. commented, “Often a shot across the bows can be a very effective means of achieving an objective. In this case the copyright in the kitchen image belongs to Martin Moore and they are entitled to exclude others from using that image without their consent.”

Dids Macdonald, ACID’s CEO said, “We are seeing this type of unauthorised use of other people’s images increasingly and would urge those who are using images on their websites to ensure that they have obtained the copyright owner’s permission to do so.”

Within a week of a cease and desist letter being sent to Skye Tiles by Fairfull Ltd., Skye Tiles have agreed to provide undertakings to deliver up any remaining stock of look alike tiles, make a payment of damages calculated in respect of the number of tiles sold and make payment of Fairfull’s legal costs in pursuing an alleged infringement on behalf of Benaya Art Ceramics for whom they are distributors in the UK.

ACID members Fairfull Limited use the Canadian company, Benaya Art Ceramics, to produce a number of their ceramic range. They also act as UK agents for Benaya and many of Benaya’s designs are exclusive to Fairfull.  Artist Patricia Bell has copyright in the artwork on the tiles as an artistic work. When Fairfull discovered that Skye Tiles were selling what appeared to be copies they decided, with Benaya’s permission, to take legal action as a precaution against potential lost sales as the exclusive distributor of Benaya’s products.

Fairfull instructed ACID accredited law firm McDaniel & Co at the Autumn Fair in September 2010, who advised them that the first step was to write a cease and desist letter to Skye Tiles putting them on notice of the infringement and requesting undertakings. Although Fairfull would be alleging infringement of copyright (an unregistered right and therefore requires proof of copying), the tiles offered by Skye Tiles were identical to those of Fairfull and therefore the only reasonable assumption was that copying had taken place. It was then incumbent on Skye Tiles to provide an innocent explanation as to why they were selling identical tiles.

Andrew Lee of McDaniel & Co comments: “Fairfull were determined to protect their market and because of their relationship with Benaya they also needed to take quick action against any copies of Benaya’s artwork. This again shows how effective a cease and desist letter can be and Fairfull ensured they had one prepared as soon as they were aware of the infringement. This is one part of an effective IP protection strategy in ensuring potential infringements are followed up immediately.”

Dids Macdonald, ACID’s CEO said, “A compelling cease and desist letter often produces a quick and effective result in an IP dispute at a fraction of the cost of taking Court action. It is also a very speedy means by which a business can reinforce its IP strategy to a competitor.”

ACID member Bentley Designs showed their true metal in an IP dispute by instructing their lawyers McDaniel & Co to send a cease and desist letter to Metal Beds Limited following discovery of a look alike bed called “Jewel”. This appeared to be a direct look alike of Bentley’s registered design “Krystal”.  Following receipt of the letter before action, Metal Beds agreed to enter into an undertaking not to sell the Jewel as well as providing the name of the supplier of the Jewel, based in the Far East. Metal Beds also agreed to provide a sworn affidavit that they had no stock and had made no sales of the Jewel as well as pay Bentley’s legal costs associated with the matter.

ACID Accredited lawyer Andrew Lee of McDaniel & Co commented, “This demonstrates the effectiveness of official design registrations and sending a timely cease and desist letter. By registering their designs, Bentley increases the scope and duration of their protection as opposed to any unregistered rights. In addition, by instructing a cease and desist letter to be sent as soon as they were aware of the potential infringement, Bentley have ensured no Jewel beds are sold in the UK and can pursue the Far East supplier.”

Bentley regularly obtains formal design registrations, through either the UK intellectual property office or OHIM, for the furniture that they sell. This allows them to monopolise that particular design against copyists and non-copyists and extend that protection for up to 25 years. This is a cost effective method of ensuring their products are protected and infringements can be pursued more effectively such as their “Krystal bed” for which they have a UK Registered Design.

Ray Davies, Bentley’s Design Director said, “Following an ACID Intellectual Property Audit we now have a robust IP strategy. After all, Bentley spends an enormous amount on design, research and development of new products and we will continue to take action with any third parties who infringe our rights.” Dids Macdonald, ACID’s CEO said, “The positive benefits of having a registered Community design are possession of a numbered certificate which, in effect, says you own the monopoly on that design. It is much easier for companies to take legal action if they have compelling evidence of design ownership.”