Continuing with the Hey! Hands off My IP series, October’s blog post looks at the benefits and drawbacks of design rights for fashion brands, and asks whether it really is worth pursuing a registered design right in the fashion industry.
What are design rights?
Design rights protect the appearance of a product, or part of the product, enabling owners of the design to enforce their rights against anyone using the design without consent.
Under English law, you can have a registered or unregistered design right and rely on either for protection. However, registered design rights offer more protection. A registered design right lasts for up to 25 years (subject to renewal every 5 years), whereas an unregistered design right is only valid for either:
- 10 years from first marketing the product made to the design; or
- 15 years from creation of a design document
whichever is shorter.
If relying on an unregistered design right, the right doesn’t actually come into existence until the design has been recorded in a design document, or an article has been made to the design.
Designers should therefore always sign and date their design documents. Records should be kept of the design document and the design process, and the date of first marketing of articles made to the design should also be recorded. These will be needed if your design is infringed in order to prove the date from which the right exists and that it is still valid.
Design right criteria
For both registered and unregistered design rights, a design must be:
- made up of a shape or outline of the whole or part of an object;
- original and have individual character, which means that it cannot be common; and
- recorded in a design document or be the subject of an object made to the design.
To be protected by unregistered design right, a design must not be:
- a method or principle of construction;
- comprise features of shape or configuration of an object which:
- enable the object to fit with another object so that either object can perform its intended function; or
- are dependent upon the appearance of another object, of which the article is intended by the designer to form an integral part; or
- be a design for surface decoration.
For all of you legal buffs out there, the relevant statute is the Copyright Designs and Patents Act 1988 and the above criteria and restrictions can be found at section 213 here.
What can’t be registered
There’re always some restrictions on what can and can’t be registered, here are some of the main ones:
- hidden parts (parts which can’t be seen once the product is made);
- features which are needed to allow the object to perform a technical function; or
- designs which go against public policy or morality.
Apart from being easier to prove than an unregistered design, and the fact you have 10, possibly 15 years more worth of protection, other benefits of registering as opposed to simply relying on unregistered rights are:
- Speed: Protection starts from the application date. Registration is likely to take place within two months of filing the design with EU Intellectual Property Office.
- Geographical scope: With a registered Community Design, the right provides EU-wide protection with the possibility of further international protection.
- Enforcement: A pan-European injunction may be available and is a cost-effective way of protecting a design in a number of different markets.
What do I need to do to register a design right in the UK?
It’s always worth doing a clearance search first to check there isn’t a similar design right registered in the territory you’re looking for protection in. However, unlike with trade marks, the examiner assessing your application doesn’t notify owners of those designs, which could be deemed similar. Instead it would be up to those owners to check on any design rights potentially infringing their earlier rights and challenge on the basis of infringement. This means the registration process is fast!
If you elect to have a clearance search carried out, once you have the go ahead, you can register a design with the UK Intellectual Property Office for UK-wide protection only, or with the EU Intellectual Property Office for EU-wide protection in all 28 Member States. A registered Community Design (EU-wide) is more expensive, but obviously offers much more protection than registering in the UK only.
As with all IP rights, it’s really important to get an expert involved to avoid any nasty pitfalls. Be sure to therefore instruct a lawyer to carry out any clearance searches and register the designs for you – not only that, it takes the hassle away from having to do it yourself!
When should I apply to register my design?
An application to register a design should be lodged prior to publication, ideally the day before, or the same day that the design is showcased to the public.
Is it worth a fashion designer applying to register a design?
As an early stage brand unless you are likely to re-use the design, collection after collection, season after season, then it’s not worth registering a design in the fashion industry. Doing so could be extremely costly given the amount of individual designs one collection will produce and the amount of collections a brand will show during its lifetime!
However, that said, some designers do re-use particular designs as a sort of trade mark of their brand. Take for example Chanel’s “Boy Chanel” iconic handbag, or Dior’s “Futurist Boots” from Raf Simons’ Spring/Summer 2015 collection.
At this particular show, Simons exposed a supernatural fashion crusade between past, present and future, which was inspired by David Bowie, who provided a soundtrack for the psychedelic looks on the runway. On his design, Simons commented, “This season, the Dior couture woman will walking on diamonds on the soles of her shoes”, pure poetry!
With such an iconic design, and given the magnitude of the design house itself, it’s no wonder that the House of Dior Couture wanted to protect this particular design.
If however, you think a particular design will only be shown once in one collection, or isn’t likely to become iconic of the brand itself, copyright is perhaps a better intellectual property right to rely on to keep costs down. See my previous post, “Hey! Hands off my IP! (Copyright)” for more info.
When protecting designs, here are some really useful practical steps to consider, whether relying on unregistered or registered design rights, or copyright:
- Use appropriate copyright notices. These put third parties on notice of a designer’s rights, such the rights in a design drawing. These should take the form of “Copyright © – [name of copyright owner]” followed by the date of first creation (the year will be sufficient), for example “© Sarah Simpson 2007”.
- Safely archive the original design drawings, with dates and stamps/signatures.
- Think about creating a stamp to use on key documents to mark their importance.
- Avoid circulating design drawings, sketches and other prep work to third parties.
- Keep contact details for each individual designer or artist working for you, including their name and nationality, copies of their employment or consultancy contract and any assignment documents.
- Have the above documents checked by a lawyer to ensure it is the brand that owns the designs and not the individual designer – this is particularly important where designers are engaged with the brand on a consultancy basis, rather than employed by the brand.