Getting design rights right

Posted on 2 Jul 2012 by The Manufacturer

Russell Corbould-Warren, SME underwriter at insurance company, Zurich, urges small manufacturers not to underrate their IP or leave design rights vulnerable.

For manufacturing companies, counterfeiting, designs, processes and technologies are all important areas that should be properly protected and valued to ensure continued business growth and innovation.

 With new systems and technologies such as ‘domesticated’ 3D printing, as well as increased government action in this area following the publication of the Hargreaves report last year, it is now more essential than ever that manufacturers’ have a firm understanding of the IP landscape which can affect their business in numerous ways.

This is particularly the case for small manufacturers who can find that IP infringement cases or a lack of IP protection can lead to costly legal disputes, severely damaging revenue intake and stunting product expansion or development.

It is in this spirit that Zurich Insurance, alongside Alexa Scoones IP Law Associate at Clyde & Co LLP, has devised a selection of top IP measures that should be considered by small manufacturers. These measures aim to help such companies protect their intellectual property and avoid infringement.

An area of specific importance to small manufacturers is the duration of design rights and the additional protection that is afforded if design rights are registered. The main benefits of registration include:

Longer Protection: a Community Unregistered Design is only valid from three years from when it is first made available to the public, whereas a Community Registered Design (i.e. one that is registered at the Office of Harmonization for the Internal Market – OHIM) is valid from five years from the date of filing up to a maximum of 25 years. 

Better Protection: Manufacturers need to be aware that their products could be subject to a whole range of IP rights. These include the design of the product itself (and its surface decoration in some cases), copyright in the design drawings and any logo’s or distinctive marks on the products which could be trademarked.

Ultimately this means manufacturers should be aware of what can be protected and what exclusive rights they could gain through registration, leading to greater protection when it comes to infringement.

Wider Protection: In respect of Unregistered Community Design Rights, it is important that the product is made available in Europe once it has been produced otherwise it is highly likely that it will not be protected. It is therefore always preferable to register the design right either as a UK or Community design.    

Alongside design rights there are a number of more general actions that all small business owners, manufacturing or otherwise, should take to better protect their IP and avoid infringement:

  1. Identify the IP assets available to your business by, conducting regular audits and cataloguing your IP rights  
  2. Once identified, work to protect your IP rights at the earliest opportunity.  In doing so you will obtain exclusivity and commercial value over those rights
  3. To avoid unnecessary litigation, search systematically for conflicting IP rights prior to seeking protection
  4. Keep up-to-date records of all research, drawings, designs, discussions and meeting notes relating to any invention, brand or product
  5. Once granted, carefully manage and maintain your IP rights in order to develop their value.  For example, by using registered trademarks appropriately
  6. Monitor the market carefully to ensure that your IP rights are not infringed.
  7. Consider how you could amplify IP rights by, for example, licensing or franchising to other businesses in your market
  8. Utilise the significant wealth of technological and commercial information available in, for example, online patent and trade mark databases to identify future business partners and to find out about the innovative activities of competitors
  9. Be careful to monitor your rights and ensure that fees are paid and rights are renewed by the relevant deadlines
  10. When considering seeking IP protection in a different country to which the enterprise is based, research and/or take advice on the country’s legal system by, for example, searching the national or regional IP office of the country in question