Design protection strategies
Jade MacIntyre and John Coldham treated Spring Conference delegates to a masterclass in how to use designs as part of an IP protection strategy.
Why should you as trade mark experts care about designs? John Coldham asked delegates.
John told us that there is lots to be gained from including designs as part of your IP protection strategy.
He went on to highlight some of the key benefits to designs:
- They are quick and cheap to obtain
- Products can be marked with a design number
- There is no substantive examination
- Effective for online enforcement
- Cover lots of features including shape
- Complement trade mark and patent protection
Designs, said Jade Macintyre, are “the fulcrum of IP rights”. They form a wrapper of protection, she suggested.
They can be used to complement other IP protection, as well as giving you a quick solution that can provide results immediately.
Where there is an underlying technology that should be protected by a patent, “a very good strategy is to simultaneously file for the design to protect your design, and a patent. Then you get a quick cheap registration for the design which can be used to enforce while you are waiting for your patent to go through to registration,” said Jade.
She continued: “In some cases it may be more advisable to file a trade mark application for a 3D product. They're more challenging to get through registration, but once if you are able to achieve it and you have a perpetual monopoly, it can just go on forever provided that the mark is in use, you pay the renewal fees.”
Using designs for the win
John discussed how this strategy can play out and help you to win cases. He pointed out that often you only need to win on some points to get the outcome you want overall.
He suggested looking at the IP protection in the round. “You've got think about all the different rights that might be in a product and use them together,” said John.
“You need to sometimes bring different bits together so that you win overall. You need to stop people and you need to use injunction to do it. So bringing the different elements together and the different IP can really help,” he concluded.