Gift Focus - Sep/Oct 2019 (Issue 115)

155 ACID Back to basics In the second of a two-part series, Dids Macdonald examines why IP matters In part one of Back to IP Basics , we covered various IP essential subjects to better understand what, to many, is a complicated set of laws. Now the focus is on design registration, protection of rights overseas, creating a proactive process for being alert to any design copies and also what you should do if you are unlucky enough to be copied. All designers should think about these IP nuggets to become more IP savvy. As Louis Pasteur once said, “Chance favours a prepared mind,” and there’s no better advice about all things IP. Taking the time to know more about IP and being proactive may save you a lot of heartache down the line. Should I register my designs? Yes – if you can afford it! Thanks to a lot of campaigning by ACID, the UK intellectual property office has reduced fees, so to register one design costs £50, and there’s a scalable and reduced set of fees for multiple applications. So it’s affordable. You can register the look of a product you’ve designed to stop people copying or stealing it. This means the appearance, shape, configuration (or how different parts of a design are arranged together) and surface decoration. If successful, you have a numbered certificate that’s basically a piece of paper that confirms your design ownership. Registering your design will give you the right to prevent others from using it without your permission for up to 25 years, renewable by paying a fee every five years. If you display your design registration number on your packaging and refer to it in your marketing material and your website, it also acts as a deterrence against copying. Remember, the design must be new, not be offensive, must be your own and does not protect the way something functions or works. Alternatively, designers can send their designs to the ACID IP Databank. This doesn’t confer additional rights but provides independent evidence of the date designs are received by ACID. A unique, tamper-proof certificate is also available. The IP Databank is useful in supporting evidence of a design’s corpus from idea to marketplace at key stages. Evidence, whether you rely on a registered design or unregistered design, is critical to successful enforcement if you’re copied. How can I watch the market for copies? In a world where online infringement is rife, monitoring is increasingly difficult, but there are brand-watching services available, and our own brand enforcement partner, SnapDragon IP, is an excellent resource. We’re also in continuing talks with search engines and online marketplaces to work together to improve takedown and track down. Of great importance, working towards a consistent approach to infringement issues is critical. Online affects not only creators but consumers, especially if copies are unsafe, which often happens. The government is continuing to hold providers to account, and it’s our hope that a regulator for search engines and online marketplaces will be appointed to safeguard originators. Exhibiting still very much plays its part in launching new designs. And at ACID-accredited exhibitions, all exhibitors can benefit from a mediation intervention service if copies are discovered. Thankfully, nearly all issues are resolved. Knowing who your competitors are, watching the market and immediately purchasing an example of a copied design is a good start to obtaining evidence to support any infringement claim. How can I protect my designs in overseas markets? Deal or no deal, if you can afford it, apply for a registered Community design. Included in the Withdrawal Bill is a provision that any designs registered before we leave the EU will be honoured. This will give protection for 25 years in EU27. A good start to a global IP protection plan. You can also register a design through the Hague Agreement, which the UK signed up to recently. This provides a mechanism for registering a design in several countries by means of a single application, filed in one language with one set of fees. Take a look via the World Intellectual Property Organisation: wipo.int/hague The Government has also, inspirationally, set up a series of IP attachés. These IP liaison officers work with the local Department for International Trade (DIT) and Foreign and Commonwealth Office (FCO) to provide support for UK businesses seeking advice on local IP matters in China, South East Asia, Brazil and India. They also raise awareness of IP through business outreach. This includes briefing business delegations, joint- webinars with DIT and local trade associations. They also liaise with host governments and stakeholders about local and international IP frameworks/environment. Details can be found on ipo.gov.uk/IPattaches What can I do if my designs are copied? • Don’t panic • Evidence: Identify your rights and IP ownership and seek advice as to how to assert them.Gather as much information as possible. • If you’re relying on a registered design, you don’t have to prove copying. If relying on unregistered design, gather your design audit trail evidence (ACID IP Databank). • Beware of groundless threats. If you wrongfully threaten someone, there can be consequences. Ensure you have the correct facts before you make contact with the alleged infringer • Copyright. Generally the person who created the copyrighted work (or their employer) is the owner of the copyright. • Name and shame – ideally through ACID so we can collectively hold infringers to account! And finally, taking legal action rarely means going all the way to a final court hearing. Often, a strongly worded letter before action or cease and desist with supporting evidence will be enough to settle a case. Above all, publicise any successful settlement to reinforce your strong IP strategy to your competitors to discourage copying. ACID acid.uk.com +44 (0)8456 443 617