Wednesday, 16 September 2015

Design Clients - the impossible market

Where they agreed
The UK Intellectual Property Office has just launched a consultation paper to determine whether the UK should join the Hague Agreement for the protection of industrial designs. Recently, the UK IPO has launched a twitter feed (@BeautifulIP) to promote design registration, mainly focusing on the low cost and benefits of registration.

It knows from the activities of organisations like ACID that design matters and is really important to UK designers, who just hate being copied or even emulated. What is more difficult to understand is why the registration systems are the most neglected part of the IP system. Even the grace period has not helped much. There is, of course, competition from Europe with the Community Design System and there is no doubt that their filing interface is a million times better than the UK one - which is still paper based. Nevertheless for a single design €350 is a lot more than £60.

A UK designer can already access the Hague System since the UK is part of the European Union, which is a member. Hague allows you to file online. It is operated by WIPO but unlike the PCT and Madrid systems for patents and trademarks, Hague goes all the way and gives you design protection, though you may still need to deal with national offices if they have additonal examination issues within 6 months. You can also file and manage your applications online. Now that you can use the system to protect your design in Europe, the USA and Japan, it has become a practical proposition for designers to use. Prior to May 2015 when the US and Japan joined, the scope of protection available beyond the EU had almost no overlap with the real market for exclusively designed products.

The biggest problem I have when dealing with clients that are interested in protecting their designs is explaining to them the nature of the representations they are going to need. These images are the essence of what is protected and a simple snapshot, a glossy picture from your catalogue, or even a clip from your production drawings isn't likely to help the judge if you want to enforce the design registration. The judge can't and won't go behind your scrappy image (even if it was taken at phenomenal cost by an art photographer)  and look at your preparatory work. This was why things went badly for the Trunki designer. Even the Supreme Court may not be able to help him. Look out for the hearing of PMS International Limited (Respondent) v Magmatic Limited 

Design clients want great value for money. They want certainty. They don't want to engage in discussions about which aspects of their design are significant and whether colour, shading or particular elements of the shape are original or commonplace. They want to evolve and change their designs frequently. They are economical with both funds and time. They are creative and don't mix well with the pedantry of lawyers. Even those who have suffered plagiarism are reluctant to make upfront investments and they prefer the court of public opinion to IPEC. Design collections are typically numerous, frequently refreshed and many designs fall by the wayside before the one classic for which 25 years of protection would be of value is found.

The UK government wants to help and support these people. I applaud them. They may be able to go where the profession cannot. Designers have abandoned lawyers but they cannot abandon the law if they want to manage what they see as plagiarism. I hope that our leading designers like Tom Dixon will stand up and respond to the good Baroness in her efforts to get UK designers to go to the WIPO site and protect their designs both in the UK and possibly in other countries which belong to the system. He briefly flirted with the system in 2011. You can search here.

Certainly if we are going to exit Europe, it's going to be a good idea for the UK to join in its own right.  The consultation paper emphasises fee savings but fails to consider how designs need to be represented for effective protection, especially in the US, where refusals may be more likely.

Do you have any design clients left? If so it may be worth responding to this consultation before 10 November 2015. The UK government is doing its very best to assist the creative industries I hope they respond and encourage the UK to sign up.


  1. A good piece, Barbara.

    "The consultation paper emphasises fee savings but fails to consider how designs need to be represented for effective protection, especially in the US, where refusals may be more likely."

    I agree. We saw in the early days of US Madrid accession a significant number of Provisional Refusals from the USPTO. Many of us can now avoid these (experience and being extra careful with US designations), but the prevalence of Provisional Refusals from the US is still high. I can only see it being similar - or worse - for US designations in Hague registrations and, if so, it'll often be a false economy filing through Hague for many. There's little warning of this.

    I also question how much bottom line fee savings an applicant would make. The rationale of the UK joining allows applicants to designate the UK rather than the EU. The basic fee for designating the EU is CHF 67 - any lower fee for designating the UK will surely be negligible?

    Designating the UK plus one more EU member state is highly likely to be more expensive than designating the EU and so is almost redundant (in fact, the basic designation fees for Finland, Hungary, Lithuania, Romania and Spain alone are already more than the EU's).

    If a UK applicant doesn't want the UK (or the EU) but other members, well they can already do this.

    I think the rationale for joining is a little flawed in this respect. I think they could have misjudged priorities (but I know they've put resources in to provide an on-line filing system for UK national designs so this is welcomed).

    Now the UK is on the path to Hague membership it might as well be supported (and, yes, we could leave the EU...). It doesn't do any harm the UK being a member, and it may bring in some additional revenue to the UK IPO without impacting on their costs.

  2. The response to the consultation is now published here and it looks like UK will join and they took this blog post into account which is even more amazaballs