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Design Sector Focus – Taking care of your Intellectual Property (IP) Rights

28 November 2019

What are the benefits?

When I talk to product or brand designers who haven’t concerned themselves much with Intellectual Property (IP) rights, be it manufacturers of consumer products, or designers themselves, they quite rightly want to know why it’s worth spending the money to get rights registered. Some designers consider IP purely a client problem, but there are numerous reasons to use it to a designer’s advantage as well. I’ve written about a few examples below to show the benefits IP rights can generate in the Design sector, although the principles can equally apply in other sectors too.

Make clear what’s yours

A typical approach I recommend to clients on a design project is to look at any design they create, and register not only the overall design, but any distinctive sub-sections of it as well. These sub-sections could include things like a distinctive lid of a new container, a light pattern from a new bike or vehicle light, a grip for a shoe, or even larger-scale parts of a boat or a building.

In a recent example, we registered five different sub-sections of a Designer’s product, delivered for a client project several years ago. Then, at a recent trade show, a past collaborator of the client exhibited a new product, which re-used a sub-section of my client’s design – one which we had registered separately during the original project. Without the registration in place, a muddy discussion of whether the new product really re-used the old design, or any significant part of it, would have ensued and taken time and significant cost to settle. Having a clear registration in place, mapping plainly onto the re-used parts in the new product, put the client in a position to present a solid case for infringement. This brought the other party to the negotiating table to find an agreement very quickly.

Infringing products can be seized at trade shows in certain circumstances, causing great public embarrassment to all involved. No time was needed in or anywhere near court and a commercial solution was arrived at. In this case, the result included some financial compensation, but more importantly for the designer, ultimately resulted in an agreement reviving the previous working relationship for future projects, securing more business for the future.

De-risk the pitch

For designers of any product or brand, there will very likely come a time at which you are pitching ‘at-risk’ (a.k.a for free). The stakes can be high, as you will inevitably have made a large investment in time and effort to create the perfect pitch. I hear all too many stories of designers putting forward a pitch which is graciously turned down, only for it to resurface, sometimes months or years later, having been pursued by an in-house design team or by another agency. There can be ambiguity on whether something was a) simply developed by two people separately and only by coincidence; or b) was copied, either inadvertently or intentionally.

Filing a few key IP registrations of your own ideas before either inviting pitches (if you’re in-house) or before going into a big pitch (if you’re an agency) can put in place an independent and reliable government record of who designed what and when. Not only independent, it can also be enforceable against any infringing parties regardless of whether actual copying has occurred or not, it’s simply a question of who filed the application first. This can help protect something in which you have invested significant time and effort, whether it’s for a pitch or an early-stage in-house development project, from being used by others for profit without you getting due compensation or recognition, in whatever form you negotiate or settle it. As in the example above, a clear registration of a design, patent or trade mark, can bring the other party to the negotiating table much more quickly.

Maximise the benefits for your client

Whether you’re in-house or working as an external designer, your client is likely to be a brand or product manager. Their IP knowledge may be very brand-focused, while as a designer, you can bring them extra value by making sure they’re considering all types of IP that you’re creating during the project. Whatever your role, understanding what IP is created in which work-products can really bring added value to your in-house or agency clients. In a recent example, I was asked to work alongside a design agency to identify IP that could benefit the end client. Where the client had considered the exercise primarily a brand development exercise, it turned out that we could identify additional IP rights in the form of:

– new 2D designs to broaden the brand’s IP footprint outside of the limited market sectors where their trade marks were already registered (if you don’t know, trade mark registrations have to be limited to particular goods and services, while design registrations cover all areas of use).

– 3D designs protecting a) the way the packaging appeared externally and b) the way the packaging revealed the product inside, which could be used in other brand ranges belonging to the client.

– functional patent protection, which protected the way the packaging could be opened by the user to access the product inside, resulting in both monopoly protection and also patent-box tax savings for up to the 20-year life of the patent.

Based on the positive IP outcomes, the designers were retained for a long-term development relationship by the client. Also a result of this success, each time the agency delivers a key pitch, they include an IP assessment for each client design project.

It’s key to remember that all design projects create IP of some kind; it has intrinsic value, and that value can be protected if considered carefully, but can easily be lost or given away inadvertently, if the right steps aren’t taken at the right time during the project. If you’re interested in discussing IP for a particular project, or learning more about IP rights relevant to the design sector, don’t hesitate to get in touch. Withers & Rogers LLP has a dedicated Designs group, including experts in all sectors, ranging from luxury and consumer brands, to software and packaging related designs and brand protection.

Russell Edson
Advanced Engineering group

If you require further information on anything covered in this briefing, please contact Russell Edson (redson@withersrogers.com; +44 20 7940 3600) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP November 2019