Design Registrations: Interview with Michelle Ward, Part Two

Here, we continue our interview with Chartered Trade Mark Attorney Michelle Ward, founder of Indelible IP. Read part one if you haven’t already where we covered the scope of protection provided by a design registration. Michelle’s insights demonstrated that for a relatively low cost and straightforward application process, design registration can provide a lot of value. In part two of the interview our focus shifted to considering design registration from more of a commercial perspective.

Now, having a deeper understanding of just how valuable a design registration can be, how important is it to be aware of enforcing your design registration?

‘Now again, one of the advantages with a design registration as opposed to unregistered rights is that you actually have a registration that people can look at and scrutinise on the official register.’

‘There are advantages to having a registered right that are often overlooked. The first one is the knowledge that you own the right, so for many small businesses that’s quite a personal one – it gives them some control over the people they are engaging with. So, they’ve got that ability to control through licensing and manufacturing agreements and so on.’

‘You’ve got the fact that because it’s on public record there’s a potential deterrent element because people can search against it. You’ve also got the fact that you can mark up your product with the design registration number so again you’ve got a big deterrent flag waving at people saying, “do not copy, I know my rights”. You’ve got the fact that if people are looking for funding for their product, you’ve got a valuable asset; intellectual property rights are considered quite carefully by people looking at investment because it gives them something to hang their investment on.’

‘So, litigation is the last one of the benefits so to speak and most cases get resolved one way or another through correspondence, so they don’t actually have to go as far as the courts.’

‘A valuable asset’

We are interested in your thoughts on consumers’ motivation for buying a product and how this affects the value of design registration?

‘Obviously it depends on the market and this is where design registration starts to overlap with trademark protection because we buy a lot of things on visuals. There is a whole load of neuroscience as to why we go with certain brands. So, if we see a brand we know and recognise, we will take the easy route and buy that. If we’re going to buy something we don’t recognise then we have to think really hard about it: am I going to trust it? Is it going to work? Is it going to be okay? What’s the build, the quality like? There are certain designs where you would make similar kinds of assessment because you are buying on aesthetic appeal.’

‘You think about wearable tech, it can have all the functionality you want, but if you don’t like the look of it, you’re not going to buy it because it’s going to be sitting on your wrist. So, yes you want it to have certain functions, but you want it to look right for you, so your buying decisions are on the basis of the functionality and the appearance.’

‘We buy a lot of things on visuals’

Those who want to develop a new product are typically thinking a lot about their consumer when it comes to the product itself, but the dots aren’t always connected when it comes to intellectual property and the consumer perspective. Do you think that sometimes intellectual property sits slightly remote from this awareness of the consumer?

‘Yes, it does. Because what I do is a lot of trademark protection, I’m always looking at the brand side of things. Often, the people developing a product are really excited about the underlying tech, but the customer is not interested in the underlying tech, they are interested in what they are going to be buying. We’re looking at what does the buyer think they’re going to get and we’re protecting what the end consumer gets, we’re not protecting the underlying tech.’

‘We’re protecting what the end consumer gets’

It seems as though trade marks and patents often dominate discussions around intellectual property, whilst in reality there is a lot of overlap between the different kinds of protection and they shouldn’t be treated in exclusivity. How would someone know whether design registration was the right option for them? Are there are certain hallmarks that make something suitable for design registration that you might look out for?

‘Not specifically, if there looks like there might be a technical angle to it, I would encourage them to explore whether or not a patent is right. Because with a patent it’s critical to ensure that you have filed your patent before the product is made public in any way. But I will also talk to them about the trademark and design side of things.’

‘Actually, you’re pulling out, what is the unique element of the product? What element are you looking at protecting? What does it do? And trying to understand what direction to take them in. So, it’s not necessarily identifying something from specific markets, it’s which elements are important to them? How would they feel if somebody copied that element? How important would that be to them. That’s something that can be quite difficult to gauge when you’re in the early stages and you don’t know how well it’s going to be received.’

‘Unfortunately, with a lot of this protection, patent has to be filed before it’s made public. With a design it should be filed before it’s made public. In the UK we have a grace period that allows you to still apply validly for protection for up to 12 months after you’ve put it out in the market. But if you want to protect it overseas, in many cases you will have shot yourself in the foot. So, I always say to people, get a design registration in before you make it public. Just because it’s okay in the UK, commercially thinking wider, I need to make sure I haven’t shot myself in the foot with other countries.’

‘Actually, you’re pulling out, what is the product?’

You’ve explained that people initially are just thinking about protecting their idea, which is good that they’re thinking about it. But, are there any specific questions that those looking into intellectual property should be asking themselves? What should be considered before jumping prematurely to a conclusion about the kind of intellectual property they need?

‘Yes, I would say, there’s the question of what elements in the design have the real potential commercial value and I understand that sometimes that’s difficult for them to gauge because they’ve had an idea and they haven’t put that thought into commercialising it. And some of it is that it’s a fundamental emotion as to how they would feel if the look of it got copied, because that’s really what we’re trying to protect with a design. It’s really getting to grips with that.’

‘And it’s very difficult early on in a project to definitively say what’s the right thing. And I know from speaking to Gethin in the past, that he’s also had that experience that people, the first thing they’ve done is gone to a patent attorney, patent filed, great expense. Then, they come to Gethin and they’ve been looking at whether it will actually work and by the time Gethin has created a working prototype, the product is completely out of the scope of the original patent and all that money is wasted.’

‘So, there is an element of timing, so I quite often talk to people about whether this is the final version because I don’t want to file it and then you make more tweaks to it that will change what we should have protected. We try to make sure that people are really clear on where they are with it and don’t get carried away doing it too early on in the development process because it’s just not worth doing.’

‘It’s a fundamental emotion as to how they would feel if the look of it got copied’

Timing is something we are especially curious about. Often, the look of a product can change quite a lot throughout the development and prototype phases. So, would you recommend that it should always be once the final version has been reached that a design is registered? And do you think waiting to register a design perhaps isn’t such a problem because the turnaround for a design registration is so much quicker than for a patent, meaning it’s not going to slow your market release drastically?

‘Really, the one thing to always be aware of, is once you’ve filed a patent, you have 18 months before its published. Now, when it’s published it will have drawings with it so the drawings that are going with it could essentially be disclosing the design. In the same way that if the design was filed and registered before the patent is filed, the design could disclose something that could be relevant to the patent, so there is a careful timing issue here.’

‘There’s so many variables there and that’s where, when someone is working on putting protection in place, having a good relationship with their advisor and making sure that their advisor is kept up to date with what is happening means that these things can be jumped on really quickly.’

‘Don’t get carried away doing it too early on in the development’

How can a design registration be leveraged by a new businesses to maintain a market position, beyond knowing the design is protected?

‘The more elements you have protected, you’re making it a harder job for someone to do something directly competing. So, it’s going to take them longer and you’ve got your opportunity to get your market position and be the market leader whilst they’re kind of playing catch up because, without running the risk of infringement action, they haven’t been able to put something out. All of it plays into how you can capitalise on your hard work and innovation to make the most of your market position because by having it protected, you’re forcing that time.’

‘Opportunity to get your market position and be the market leader’

We’ve talked a lot about the value of being able to list a design registration number on product packaging to illustrate to consumers that the design is protected. What would be the main ways that a design registration could help a business maintain a competitive edge in the market? Is it just the fact that having IP effectively dissuades competitors?

‘In some industries, they like to boast about the number of patents they have, kind of like an industry kudos – if they have x number of rights aren’t they brilliant and innovative. It’s sending a specific message and it works in their sector. More on the brand side of things, it is about an industry kudos: you’re taking yourself and your product seriously so you’re protecting it and that can have an elevating effect. And for consumers, it’s almost like conveying a message to say we’re taking all the steps to ensure this is a right-on product and here’s the details of our design registration. All these things all roll into one, but that few hundred pounds potentially on getting some design registration in the UK could really help you.’

‘You’re taking yourself and your product seriously’

As you’ve mentioned, consumers are becoming increasingly invested in buying products from real people – when they can see the story behind the brand. Thus, leveraging a design registration in this way, to illustrate that the design is important enough to protect, could be really effective. Do you think the power of using design registration in this way will become more widespread?

‘I think people are being more careful about what they’re buying, and I think some of that is environmental, people are looking at the credentials of the product, they’re looking at has it been made in the UK, is it made sustainably. So, there is a drive in certain areas which are making consumers much more careful about what they’re buying; people are obviously going to be feeling the pinch a lot again when it comes to their disposable income so I think that’s going to make people more careful about spending their money. You know, those things that make people feel reassured that they’ve got a product of value here. It’s a number of things, it’s not just, has it got design registration, it’s has it been produced somewhere that’s not got too many travelling miles on it. So, there’s going to be a lot of things that are driving this consumer shift.’

‘Those things that make people feel reassured that they’ve got a product of value’

Are there any other changes or any trends you’ve observed that you think could affect design registration over the next few years?

‘Well designs and trademark registration are both on the rise in the UK at the moment, we have seen over the past year a massive increase. And part of it is driven by Brexit, because UK businesses would quite often seek an EU right, and EU businesses would seek and EU right and have protection in the UK, but that’s no longer possible. So, we’re seeing a bit of a rise, just because there’s been that split from the EU.’

‘I think one of the things the pandemic has done is it’s pushed a lot of people to set up their own businesses. It’s always seemed like an odd time, we’re in difficult economic times and you start a new business. But, in actual fact all those people who have been economically hard-hit, you know they may have been made redundant, and are essentially realising that there’s not a future in the role that they’ve got, they’ve decided to go it alone. Some of those people are setting up service businesses, but some of them have also got product ideas, and it’s amazing the number of enquiries that I’ve had from people who are setting up new products. So, there obviously is a driver here. I think we saw an increase when we had the changes to the law brought in in 2015 when it became a criminal provision for people to copy a design registration and I think people like ACID (Anti Copying in Design Forum) have quite good campaigns running to try and promote the fact that design registration is something valuable to do.’