The commercial world can be a vicious and cut-throat place.
Companies introduce innovative new products, only to find that their competitors have brought out 'copycat' products shortly after. How can businesses protect the investments they make in new products and reap the rewards they deserve?
One key aspect of a product that companies can protect is its design. By producing products with an innovative or unique design, companies can gain legal protection against would-be copycats and build a stronger position in the market.
Conan Chitham of law firm Mishcon de Reya explains: ‘The main protections on product designs in the UK were set out in the 1988 Copyright, Designs and Patent Act and the recently amended Registered Design Act 1949. The simplest protection is offered by an Unregistered Design Right. A company can automatically claim a right on its product once it records the design in a document or offers the product for sale. This gives a company up to 10 years’ protection against copying. The right is most often upheld on functional designs, such as electronic printed circuit boards or mechanical components.’
A recent high profile example of this unregistered design right in action was when well-known appliance maker Dyson took spare parts company Qualtex to court in 2004. Qualtex had passed official Dyson spares (such as handles and brushes) to its supplying manufacturers for them to produce copies. Dyson claimed that this infringed its rights under the 1988 Act, but Qualtex claimed it was entitled to do so under two exceptions in the act. These exceptions prevent a design right existing where third-party spare parts “must fit” (must be able to slot correctly into place within the overall product) and “must match” (must not look out of place or be the wrong colour).
‘Although Qualtex might usually have been permitted to sell unofficial spares for Dyson products, the court ruled against it in this case because it had copied features of the Dyson design beyond the “must fit” and “must match” exceptions,’ says Chitham. ‘Specifically, they had copied the ribbed plastic detailing on a handle which was designed to give the user a better grip. The court decided that a design element with a functional purpose like the Dyson ribbing was legally protectable.’
More ‘aesthetic’ design elements can be protected with a Registered Design (obtained via the UK Patent Office) or with European Community Design Rights (which can be either Unregistered or Registered). ‘Registered design rights can last for up to 25 years and give very wide protection to visual designs – such as the pattern on a range of crockery – but only if they can be shown to be novel,’ says Chitham. ‘Community unregistered design rights last 3 years and protect designs at a similar level but are conferred automatically. This can be vital for fast-moving, fashion-conscious industries such as clothing manufacture.’
Companies can also act to protect their designs with the support of industry groups such as Anti Copying in Design, or ACID. ACID has assisted many UK businesses in their defence of their designs against copycat products. For instance, Derbyshire toymaker The Dolls House Emporium recently worked with ACID to take action against companies selling copies of their products. The inferior copies were manufactured in the Far East, and The Dolls House Emporium asserted that they were clearly based on their original ‘Park House’ and ‘Queen Anne’ designs.
Swift and decisive action by The Dolls House Emporium helped prevent further sales of the copies and, in one case, secured them a substantial out-of-court settlement. As The Dolls House Emporium's managing director Jackie Lee says: ‘It is essential that we make it clear to all competitors that we are prepared to defend our rights, and that indiscriminate production of lookalike products is simply not acceptable.’
If you feel that your products and business are suffering from the effect of copycats, the sensible first move is to consult a legal advisor or trade organisation specialising in intellectual property and design law. If you want to take pre-emptive action to protect a new product, you could also start by identifying what aspects of the design are unique, novel or functionally noteworthy – these could be the all-important details that give your product the protection it needs in the critical early years of its life.