Keltie LLP was pleased to host a workshop for in-house counsel on the topic of designs. The programme kicked off with a refresher by Emily Weal, associate at Keltie, on Registered vs Unregistered designs, followed by a talk from Lynn Schreier, Senior Intellectual Property Counsel at Swarovski, who gave some insights into handling freedom-to-operate in the luxury goods market. The workshop closed with an open forum discussion moderated by Michael Moore, partner at Keltie.

Emily used an example of two similar cardigan designs, one from a designer brand and the other from a high-street shop, to illustrate differences between registered and unregistered designs, in particular in the context of a possible infringement (demonstrating that one cannot shop in peace after spending a lot of time thinking about designs!).

The main aspects on the presentation centred on filing strategies that might best exploit a potential registered design in the earliest of the two cardigan designs, and which rights, if any might hypothetically have been infringed by the later design. The presentation highlighted the differences in protection offered by a Community Registered and Unregistered Designs (i.e. something that is new and creates a different impression on the informed user, including colourways and different shades of grey which will be interpreted as such, reiterated in Magmatic Ltd v PMS International Limited) and a UK Unregistered Design (i.e. a shape or configuration that is original, that is to say not copied and not commonplace – excluding methods of construction and surface ornamentations, such as e.g. patterns or colourways, reiterated in Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd).

From these considerations of the basic design rights, Emily made the point that although the threshold for obtaining protection by a UK unregistered design is lower (i.e. the design does not have to be ‘new’, but merely ‘original’), a right can only be enforced if there is a reasonable case that the alleged infringer has in fact copied the design, and the burden of proof for this falls on the alleged proprietor. This burden can be reversed if there is an obvious similarity between the two designs and there has been an opportunity for the alleged infringer to copy the design (e.g. it is widely available on the market), or if it would be almost impossible for the claimant to produce evidence to prove copying.

Community Registered Design on the other hand has a higher threshold for a right to be valid (i.e. the design has to be new), but the scope of the design can be broader and a claimant would only have to prove that the infringing design produces the same overall impression on the informed user, bearing in mind the design corpus. This has several consequences:

i) It is important to think about what one wants to register (i.e. which are the features of interest in the design, if only a detail on an item is actually new and distinctive, but the entire item is registered, then it may be hard to argue for a distinct overall impression);

ii) When thinking about what is registered, it is important to keep in mind that the registration (and not the actual item that is commercialised) is compared to the allegedly infringing item when assessing whether or not it creates the same overall impression as;

iii) Keep in mind who your informed user is; and

iv) The decision on whether a design creates the same overall impression will be made in the context of the relevant design corpus, such that if a corpus is very densely populated then the protection that will arise from the right will be narrower. This point was demonstrated again in Magmatic Ltd v PMS International Limited (overturned in appeal) where in first instance infringement was found because there was nothing in the corpus for ride on suitcases, compared to a case with a much more densely populated design corpus such as Apple Inc. v. Samsung Electronics Co., Ltd. , where no infringement was found.

Emily concluded her talk with the words of wisdom that one cannot predict an infringement but one can research the design corpus (and informed user)… In this context, Registered Designs have the non-negligible advantage that one can choose which elements to register in view of this corpus, so as to effectively protect the elements that are actually new and valuable to the proprietor of the right.

Lynn, Senior Intellectual Property Counsel at Swarovski, then followed on with examples from her own experience of handling freedom-to-operate issues in a very dense design field, and working as part of a very fast moving business where new designs are produced in vast amounts and put to market quickly, and where the additional need to be “on trend” means that the design corpus for an item will almost always be dense by definition. In this context, design clearance searches have to be thorough but targeted, and interactions with a design/marketing team are essential to understand the value of a design for the business, and be able to provide useful information for a designer to be able to design around potential problems, if needed. Lynn also demonstrated the benefits of understanding a design and its field well in advance of putting a product to market, so as to be able to quickly demonstrate what makes your design different and the design of a claimant not as unique as they might think!

Finally, Lynn made the point that good interactions with your design team is also essential to be able to document the creation and evolution of a design, and to be able to feedback the information that is useful for them to be able to respond appropriately. This is obviously no easy task and was discussed in the open discussion that ensued, after Lynn touched on the importance of using case studies to promote a good understanding of the importance of design clearance work, that is performed by an in house counsel.

Many of the other points raised above were also touched on in the open discussion, which kicked off with the question of whether Registered Designs are actually good value for money when they can be difficult to enforce… As ever the answer to that seemed to be: it depends! If, for example, a design is truly unique and one is first on the market then a Registered Design can be a very powerful right, especially if good internal documentation is kept to prove this, and the Registration is carefully tailored to protect the aspects of interest in view of the design corpus. Then comes the very difficult problem of assessing value of something that is essentially there to discourage potential infringers, i.e. how can you tell how many people have been put off copying your design? This nicely ended the discussion by coming back to Lynn’s point that case studies are not only essential for learning what one is doing well and what can be improved, but also to show the value of getting it right when it comes to freedom-to-operate and/or registered rights.

Camille Terfve 23 July 2015