Design protection is an often overlooked aspect of intellectual property. It is common to protect physical products via a patent, which may protect how the product is made or how it works, while trade mark protection may be used to protect the brand that may have been constructed around the product. Design rights have their place in protecting both products and brands and can often be used to complement either or both of patent and trade mark rights.
Fundamentally, design rights protect the appearance of an item. The item in question may be, among other things, a physical product or one or more aspects of branding, such as a logo or part of the product packaging. Design right comes in two distinct forms: registered and unregistered. Unregistered protection is similar to copyright in that it subsists automatically and requires that there is copying for there to be an infringement. The requirement for copying means that it is rarely advisable to rely solely on unregistered rights to protect your designs. Registered design protection is stronger in that it lasts longer than the unregistered equivalent and provides the owner with monopoly protection of the registered design. Registered design protection is also available at low cost and, in many cases, is granted within only a couple of weeks of filing making design protection relatively straightforward to factor into any IP strategy.
Where considerable effort has been made in connection with the appearance of a product, patent protection alone may leave you vulnerable to competing products that emulate the appearance of yours, even if the patent ensures that your product has a technical advantage over the competition. Alternatively, there may be nothing patentably new about your product, and it may instead rely solely on its appearance to stand out from the crowd. In either of these cases, registered design protection may be useful to strengthen your position and, in particular in the latter case, may be essential for preventing copycat products from eating into your market share.
Trade marks can in theory be registered to protect shapes. However, the trade mark must be regarded by consumers as a designator of commercial source and this can be difficult to prove. In addition, if the trade mark is for a shape that gives substantial value to the goods, then protection is strictly prohibited. Furthermore, all types of trade mark are limited in the extent of their protection to goods and services similar to those specified in the trade mark registration, unless a reputation can be evidenced. Design protection, however, can protect the shape of a product regardless of its suitability as an indicator of commercial source and is ideal for protecting a shape that confers substantial value. Additionally, designs can protect many elements of a brand without any restriction on goods and services. While design right should not be considered an alternative to trade marks for protecting a brand in the long term, the period of exclusive use of brand elements across all classes of goods and services provided by design rights can be useful in helping establish a strong brand identity and for protecting your brand in relation to goods and services into which your business might move in the future.
In the world of intellectual property there will never exist a one-size-fits-all approach to safeguarding one’s right, and while patents and trade marks will continue to be the go-to forms of protection, design rights have their place in the optimum IP strategy for many businesses.