Industry insight Co-published editorial

Written by Kristin Geboers Why it’s time for

Registered designs can protect your when it comes time to enforce. functional components that might not be brand’s x-factor and as a result are a David Stone is a UK-based partner able to be used as a differentiator.” powerful arrow in the IP quiver, writes with Simmons & Simmons and author of Fact is, this is one of the few cases Kristin Geboers of the trademark the book European Union Design Law: A in life, let alone IP law, where form can’t business of Thomson Reuters Practitioner’s Guide. He also represented follow function. Sometimes companies Samsung in England and Wales in the need to add something new, a distinctive Patents, trademarks and copyrights are recent Apple v Samsung case. He explained: look or curve that is not functional, but pretty straightforward creatures. They “Designs are an enormously powerful rather part of the brand’s X-factor to meet protect unique inventions, words, symbols arrow in the quiver of IP protection, but, the necessary criteria for a . and works so no one else can copy the traditionally, clearance specific to designs Therefore, when registering the design, expression of your idea. Sure, there are has been slow, inaccurate and expensive, it can often be more effective to focus on nuances: a patent’s originality can be primarily because the rights have not been a specific design attribute of the product, challenged; trademarks may only cover properly databased by search organisations.” rather than the whole thing. Mr Stone certain classes of goods in certain regions of What Mr Stone has touched upon is added: “In Europe, you can register the the world. But, for the most part, the rules one of the central challenges confronting design of part of a product. Let’s say for of the game are well-established and the legal teams as they seek to secure design example that the handle of a knife is a filing process is universally understood. protection. How can you properly ensure particularly striking design. You can register This is not the case with the that no other companies have registered the design for just the handle, rather than nonconformist cousin of the patent and a similar design when the words used to the whole knife. This approach can often the trademark, the right. describe designs are so subjective? be more valuable than trying to register Industrial designs can span different IP Mr Stone recommended that time spent the whole product because it is less likely disciplines. In the European Union, designs in the clearance process is time well spent: that functional aspects of the product will are protected by the registered Community “More sophisticated companies recognise that interfere with the design focus.” design (or RCD), whereas the US currently there are lots of variables to consider when Despite the challenges of securing issues both design patents and trademark clearing new products: not only the brand, but design protection in the US and Europe, registrations for designs elements. These also the shape, colours and materials of the the field is growing rapidly. Over 700,000 hybrid IP rights protect the ornamental product and its packaging. Many of these will applications for industrial designs are design of an object. That can be the shape, spill over between trademark law and design now filed around the world each year material and look of a soda bottle; the unique laws. For example, a bottle shape can be and, according to WIPO data, design appearance of a medical device; or – as one registered as a 3-D trademark and as a design; registrations filed and issued through recent high-profile case showed us – the the clearance process needs to take all of these its Hague System for the International Apple-ness or not of a tablet computer. variables into account.” Registration of Industrial Designs Maury Tepper, a partner with Tepper & When juggling all of these variables, the increased 6.6 percent in 2011. Eyster, PLLC, an IP specialist law firm based challenge of weeding out false-positives The Hague System, was introduced to in North Carolina, explained: “These days, and ensuring that every stone is turned at provide a mechanism for registering an there has been a lot of attention to design the clearance phase can mean the difference industrial design in several countries by and human factors in consumer between a solid clearance strategy and a means of a single application filed in one products. One need look no further than missed opportunity. It is essential that this language with one set of fees. By making Apple. They’ve had huge success because process includes accurate search codes, it easier to file, the system has led to an everything they put out looks like a work comprehensive design database work and increase in industrial design filings around of art. They manage to articulate a design expertise in the sometimes ethereal world the world. In December 2012, the US signed approach where anyone can look at the of design differentiation. onto the Hague System, which is expected product and say: that’s an Apple product. A One unique aspect to design patents is to significantly increase global filing. good IP protection strategy should seek to that they cover the appearance of a product, As more parties begin diving into the protect that intangible design differentiator.” rather than a specific function. space, the challenges – and opportunities In fact, in the landmark battle between Mr Tepper explained: “Functionality is – are sure to mount. For the attorneys, Apple and Samsung, the design patents always a concern in the US. We don’t want and IP search professionals Apple had on its iPhone were central to to allow the design protection to bleed over who will lead this charge, the single most their victory before the California jury. into areas that should be covered by utility important ingredient will be easy access to But this value comes at a price. Because patents. One of the challenges for attorneys complete, accurate information. design patents cover an inherently intangible is making that determination and trying set of criteria, they can be enormously to get your clients to think about this in Kristin Geboers is a senior product challenging to search in the clearance the design process. If you design a product marketing manager for the trademark process and subject to wide interpretation to be perfectly efficient, you build lots of business of Thomson Reuters www.iam-magazine.com Intellectual Asset Management May/June 2013 9