Design Registrations: Interview with Michelle Ward, Part One
Recently, Holly and Gethin from the ITERATE team sat down over Zoom to interview Michelle Ward. Michelle is a Chartered Trade Mark Attorney; she has more than 28 years’ experience advising brands on intellectual property. Michelle specialises in trade marks, copyright, design registrations and unregistered design rights and in 2016, founded Indelible IP. Michelle shared her wealth of knowledge on the value of design registrations within the wider IP landscape. She made a compelling case for raising the profile of design registration and explained how this particular design right can be used in clever ways to not only protect your design but also to enrich your brand.
Firstly, could you give us an overview of design registration; how valuable is this as a method of protection and where does it sit in relation to patents?
‘It’s interesting because design registration often gets referred to as the Cinderella right: very undervalued, often swept under the carpet, not considered a lot. But it can really come out and shine. People do often see patent as the kind of golden bullet; you see people say, “I’ve got x number of patents” but that doesn’t make it a commercially viable product.’
‘People use patent and IP interchangeably, whereas in fact, IP or intellectual property is an umbrella term for lots of different types of rights including patents, designs, trademarks and copyrights.’
‘There is this issue of the innovative step so, if combining two things together to create a new product is obvious, you’re not going to get a patent on it but what the product looks like visually is something that you could get a design registration on. A lot of copying that goes on will copy the look of something but not necessarily the underlying technical ability of the product; the inner workings could be absolute rubbish, but it looks like the same thing from the outside. And design registration is giving another avenue whereby people can stop what in many cases amounts to a counterfeit product, even if the inner workings are completely useless and possibly dangerous but it looks to all intents and purposes like it’s actually the real genuine product.’
‘Design registration often gets referred to as the Cinderella right’
Beyond the clear value of ensuring the look of a product can be protected, are there any other benefits in choosing to register a design that people should be aware of?
‘So, design registration has a number of advantages which people just don’t understand or consider. As a general rule, and certainly within the UK, it’s a very quick registered right to obtain. Most cases are quite straightforward; there’s not a lot of review that’s undertaken. It’s exceptionally rare to get issues raised during the application process so they can go through to registration very quickly. The advantage there is that you quickly get a right that you can put onto your packaging, something that you can very quickly be in a position to enforce. Whereas, a patent at best is going to take you three to four years to get.’
‘Another advantage of the UK system certainly, it gets very different as you go overseas, is that it’s actually relatively inexpensive to obtain. The official fees start at £50. They go up from there, but they don’t go up by very much and if you’ve got several alternatives of the design you can potentially file what’s called a multiple design and you can get up to 10 registered designs and the official fee only goes up to £70.’
‘Now, obviously if you use a professional advisor then you will have the professional advisor’s fees on top of that, but one of the critical things about design registration is that the images that are filed have to show what is new and special about your design. If the images don’t show that, it doesn’t matter that you’ve got a registered design it’s going to be completely worthless.
‘If you look at the speed of protection, the cost of protection and the value that you can get from it, it is something that’s worth considering. People get very excited about patents, they sometimes get very excited about brand, but they forget about this other right that sort of sits between the two.’
‘It’s exceptionally rare to get issues raised during the application process’
You’ve mentioned that design registrations focus on what is new about a product. When you submit the drawings for a design registration, whoever grants the decision, what exactly are they looking for in order to grant it?
‘Well, they’re not applying a test to it as to whether they think it’s new or not. So, to a certain extent, a design registration – certainly from a UK and EU perspective – is something of a deposit system. As long as you’re ticking certain admin boxes with your submission, they will grant you a registration.
‘One of the things about design registration is that if the shape or configuration is something which has to be a certain way to achieve a technical effect, or it has to be a certain shape, it’s excluded from protection. So there really is no technical protection. It’s where there’s that element of design flair that comes in and that might be very very minor for some technical products, but that is the consideration. Medical products will be one of these areas where you will have certain constraints; where things have to be a certain way, that bit wouldn’t get protection but the rest of it probably could. So, it’s understanding what element is the new bit and what is not purely dictated by function.’
‘It’s where there’s that element of design flair that comes in’
So, does this mean that if a product’s form is critical to its function, that part of the form would not be covered by a design registration?
‘Yes, and that’s really where the patent kind of kicks in. People get very focussed with the patent and they’re covering the functional bit, and then someone comes along and manages to achieve the function in a different way with a different look and suddenly everything’s out of the window when it comes to protection. At the end of the day, if you’ve got protection there, you’re forcing people to have to innovate. There’s a lot of talk about whether getting intellectual property rights stifles innovation or encourages it.’
‘If you’ve got protection there, you’re forcing people to have to innovate’
Often as Clients are developing one product, they are already thinking about possible future versions. How exactly does it work when you register multiple designs? Do you have to file separate registrations and how costly and time-consuming is the process?
‘You would end up with completely different design registrations, it’s like cost-saving at the outset so you group them into one, but it’s called a multiple and they ultimately still all get their own individual filing numbers, they all get individually examined and they individually register and they are individually renewed. It’s not uncommon for people to have a design but they know that there are some variations that could be made. So, if they’re being quite forward-thinking then one option, as long as it’s relatively easy to put together the drawings for the obvious variants, is to file for each one of those variants as well. So, for example, if there’s a slight configuration difference you might file several different configurations. That way you maximise the breadth of protection you can get. With a patent, you may have different claims within the patent that will cover lots of variations.’
‘Maximise the breadth of protection you can get’
Considering the level of protection more closely, what does or can a design registration actually cover?
‘People often don’t realise the scope of what you can get protected. They’ll look at it and go, well my product’s not really aesthetic. That’s not the test for being able to get a design registration; it’s not about whether it’s pleasing to the eye, it’s protecting the visual appearance.’
‘Under UK law we can protect features which relate to the shape, which relate to the configuration layout and which relate to pattern. You can protect part of a design, you don’t have to crowd it with the existing stuff, you can protect just the new bit. You can’t protect the inner workings of a product, but can protect anything we see in normal operation. That could include something that you would have to open up or something that you would readily go into a compartment to use, so anything that the end user would see.’
‘It’s not about whether it’s pleasing to the eye’
When creating and preparing the drawings needed to file for a design registration, how specific should they be? So, things like measurements and colour, do those things have any bearing?
‘Firstly, we don’t put measurements in, the size of it is not one of the things that gets protected. So, you could produce it on this scale and someone else might produce it on that scale but if it looks the same, it’s still an infringement. Colour you have to think about very carefully; is colour going to be a design element or is it something which is completely irrelevant, and you just happened to put the images through in that colour, in which case we want to disclaim that.’
‘So, the detail that we need to go into to understand whether we’re doing the right thing with the images, the discussion has to be right at the start so we generally look at the images that we get sent with “can I get a design registration on this” and we’ll ask what is special about it? What are you protecting? Is there a particular feature that’s important? And is the pattern on it important, all of those sorts of things, because the pattern we might protect completely separately so it’s not part of the product.’
‘Then once we’ve got the images – in the UK it can be photographs, CAD drawings, line drawings, when we go into other countries they get a bit more specific. In the US it has to be line drawings and they’re very specific about the format of them. No background, no pointing, no people in the images, but it has to be clear and you need to show as many angles as you can. In the UK we can file 9 views so, you’ve got a bit of scope. But if it’s not shown, it’s not protected – it really is that simple.’
‘If it’s not shown, it’s not protected – it really is that simple’
Looking more widely across the IP landscape, how significant are the differences between a design registration and unregistered design rights?
‘One of the principle differences is that with a design registration, if someone else independently comes up with essentially something that looks the same, your design registration will give you protection. Whereas, with an unregistered design right, you have to prove copying, or the other person has to prove that they haven’t copied. So, if someone has independently come up with it, an unregistered right will not help you.’
‘The tests for infringement are not easy to cover. People may go, oh if I’ve changed five things, it’s different – well not necessarily. The test for infringement is whether something gives the same overall impression with an eye on the freedom of the designer. So, if you have very strict constraints on a particular field; for example, medical device where your ability to deviate is quite narrow, this means the scope of the right may be somewhat narrow.’
‘Whereas, if you’re looking at something that could be any shape or any appearance that you want, then the scope of your rights are going to be assessed more broadly in terms of how different something has to be before it escapes infringement so there’s some quite difficult tests that have to be applied and considered.’
‘The test for infringement is whether something gives the same overall impression’
We had so much to talk about with Michelle that we couldn’t fit it into one article. Part two of our interview will be released soon. In the second part of the interview, Michelle shared more insight into the real commercial value of design registration.
gethin@iterate-uk.com
holly@iterate-uk.com
Contact: 01291 408283
