INTELLECTUAL ENDEAVOURS

Whether you’re a manufacturer or designer, it is important to be protecting the intellectual property (IP) of your work. Terms such as patent, trademark or copyright may well be familiar, but what about ‘design rights’? Howard Crossman and Heidi Groom explain what this IP protection is, and how it might be valuable

By Howard Crossman and Heidi Groom

Intellectual property (IP) is an evolving area of law as businesses seek to protect ideas and creations, with lighting and lighting design professionals being no exception. Many people will probably recognise phrases such as ‘patents’, ‘trademarks’ and ‘copyright’ in this context. A patent protects an invention, a trademark protects your company name and/or logo, and copyright prevents someone from copying your work. These all form part of your brand and can protect how your business is represented to the world.

However, there is another IP protection that people may be less familiar with – ‘design rights’. When it comes reviewing what you are creating as a lighting professional, and whether it is adequately protected by law, it is useful to consider design rights. Used wisely, design rights have the ability to become a highly valuable asset, especially for those just starting out in business.

So, what are design rights and how can they enhance the IP protections available to you as a lighting professional?

A design right can protect the appearance of your product including the shape or configuration of a purely functional product, such as a lamp, streetlight or light fixture, from being copied similar to copyright. The design right can protect the whole or a part of the product and can be either an internal or external component. For an internal component to have protection it must be visible when the product is being used.

An example of this could be a lamp. A design right could protect the shape of the lamp, the material used to create the base of the lamp or a bracket, or the lamp switch or even a combination of all of these, all of which will protect them from being copied. Bear in mind, however, design rights would not extend to any pattern or design on the surface of the lamp, as these will have their own protection under copyright.

For a design right to attract protection, the design must be original and be recorded, for example in the form of a design drawing or a model made to the specification of the design.

Recording a design in this context can cover many forms of media, including: a drawing, written description, photograph, data stored on a computer and others. Therefore, if you start a design sketch and add more details with the evolving design this is capable of having a design right.

It is important to remember a design right protects purely design features; the shape or configuration of your design cannot be protected if it is simply how the product needs to fit together in order to work. Your design right also cannot rely on another product that will form an integral part of the functionality of the product. For instance, the type of switch used cannot be protected if it is based on the location of the internal electronics.

In the UK and Europe, a two-tiered system is applied to design rights. These are ‘registered design rights’ (RDR) and ‘unregistered design rights’ (UDR). We shall look at these in turn.

REGISTERED DESIGN RIGHTS (RDR) A registered design right (registered community design in the European Union) essentially protects the appearance of your functional product from being copied. An RDR means you retain the exclusive rights to the visual appearance of the whole or part of a design (such as texture, colour or shape) when applied to your functional product.

Being in possession of an RDR for your product will also assist you when you seek to utilise licensing opportunities as, of course, it again protects you from other copying or using your design and moving into new markets as a result.

An RDR can protect both three-dimensional and two-dimensional designs. The design must be new; there can be no identical design disclosed to the public anywhere in the world. The design must also have its own ‘individual character’. However, when it comes to functional products it is accepted that the design freedom may be limited and there may be fewer differences from pre-existing designs.

Finally, an RDR offers protection across all sectors; it is not limited to the sector or product it was originally applied to. In other words, if your design is used, or someone attempts to register your design for another sector, you will be notified.

The price for registering design rights is slightly different between the UK and EU. For the UK it is £50 per design (or £70 for up to 10 designs). For the EU, it is €230 (or

www.theilp.org.uk €115 for up to 10 designs). Both these figures exclude lawyers’ fees or other supplementary expenses, such as the cost of preparing drawings.

An RDR will last for 25 years, provided the appropriate renewal is completed every five years. If your design right does lapse, you are able to request that it is reinstated but there is an additional charge for doing this.

UNREGISTERED DESIGN RIGHTS (UDR) An unregistered design right (unregistered community design in the EU) arises automatically rather than being something you have to apply to register (as the name suggests). A product must meet certain criteria, for example that it is an original, non-commonplace product.

Again, its purpose is to protect a design from being copied. In the UK, UDRs only apply to three-dimensional designs, but can protect the shape and configuration of products, both internally and externally.

Whereas an RDR can last for 25 years, as outlined above, the protection from a UDR lasts for a shorter period of time: 10 years following any sale of the product, or 15 years following the creation, whichever is lesser. Nevertheless, a UDR can still be a valuable protection. It gives the owner of the design the right the exclusive right to reproduce the design for commercial purposes by making models and/or the product, or for creating a design document that then enables products to be made. This could be, for example, engineering documents.

HOW TO APPLY As explained, a UDR arises automatically. When it comes to RDRs the process for registering is quick and relatively low cost particularly for the level of protection that it offers. After all, the value in competitive terms of having a monopoly on your design could far outweigh any initial costs for registering a design right.

To register a design, you will need to make an application to the Designs Registry of the Intellectual Property Office (IPO) with the prescribed fee. It is also possible to apply online, at www.gov.uk/government/ organisations/intellectual-property-office In the UK, the IPO will examine your application within two weeks. If an objection is raised, you have two months to respond. Once approved, the design is added to the list of registered designs and made public unless registration is deferred, which can be done for up to 12 months.

In the EU, the design application will be checked to ensure all the necessary formalities have been observed and the correct fee paid. The timeframe can be shorter for EU-registered designs, which can be registered in as little as two days from the date of the application.

WAYS TO PROTECT YOURSELF Beyond putting in place these formal legal IP protections, it can be useful from an IP standpoint to get into the habit of protecting and recording your design process on a regular basis. So:

• If you are a designer, ensure you sign and date any design documents. Remember that this can be when, from a design protection perspective, the clock starts ticking • Ensure that you keep records of the design document and the design process; this shows your original thought process • Finally, include in the records the date that the products were first marketed

CONCLUSION Remember, the use of design rights is just one way to protect your IP, and design rights may need to be something you consider in tandem with patent, trademark and copyright protection. In essence, you may have more than one type of IP protection for your designs and products. And, as ever, if you are in any doubt, seek out professional legal advice or guidance.

Ultimately, the message here is: when looking at your designs and products take a moment to consider their ‘hidden’ intellectual value to your business and the protection (and extent of protections) you may need to ensure your lighting business remains competitive and profitable.

Howard Crossman (hcrossman@greenwoodsgrm.co.uk) is head of construction and Heidi Groom is a trainee solicitor at Greenwoods GRM

With offices in London, Cambridge and Peterborough, Greenwoods GRM is a UK commercial law firm providing legal advice and pragmatic solutions to local, national and international clients

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