Registration of design rights. Considerations when building an intellectual property portfolio

October 17, 2012

This article was originally written for and featured in Fresh Business Thinking.

In December 2011 we reported on the battle that had broken out between the Cambridge Satchel Company and its former manufacturer, which was trading under the name Zatchels

Following the commencement of Court proceedings, the Cambridge Satchel Company has now reached a settlement for the infringement of its intellectual property rights with an undisclosed sum being paid to it by Zatchels.

One of the key reasons for the Cambridge Satchel Company’s success was that it had thought ahead.  The most valuable assets held by fashion companies are:

  1. their brand; and
  2. their designs.  

Generally, companies will invest time and money in protecting their name and any logos being used with trade marks but are far less likely to consider whether designs should be registered.

The Cambridge Satchel Company is an exception as a search on the European Designs Register reveals that it is the owner of numerous registered designs for its products.

Community registered designs last for 25 years (provided renewal fees are paid) and one filing covers all territories in the European Union.  Applying to register a design is a relatively straightforward process, although there are pitfalls for the unwary.  While design rights do not have to be registered, where they are not registered the protection which they afford will be more limited in terms of duration – the Community right only lasts for 3 years. Further a designer has to prove copying in order to succeed.

In order to be valid a Community registered design must be new and of individual character.  There are also various technical exclusions for designs which are solely functional.  However, the European Registry does not examine this aspect of a design and provided the application is submitted in correct form it will proceed to registration. 

Under European law, new and of individual character means in effect that the identical design has not been sold before and that the design in which protection is being claimed makes a different overall impression on the informed user to designs already on the market.  This is something which must be considered on a case by case basis and in some circumstances parts of products can be registered rather than the whole product or, alternatively, both the whole and parts can be registered in order maximise the protection being granted.   

A design can be registered up to 12 months after it has first been placed on sale.  Therefore, companies are able to trial products and see how successful they are before incurring the costs of a registration. However, if this approach is followed, we recommend carefully noting the date on which this period expires so that you don’t miss the boat and lose out!

Fox Williams works with fashion clients to discuss and identify products from ranges for which registration should be sought and the aspects of designs that should be claimed and has expertise both in the EU and further afield. 

Related pages:

Fashion more

Intellectual property more

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