The Star Wars Stormtrooper helmet caused a famous dispute between a designer and business owner. Photograph: Reuters/ Steve Marcus.
The Intellectual Property Act 2014 came into force this week to simplify the process for protecting 3D designs and put design rights on an even footing with copyright and trademark.
The Guardian’s Guy Wilmot explains what it means for small business:
‘The Intellectual Property Act 2014 came into force this week, and it has significant implications for small and medium sized enterprises (SMEs).
One of its objectives was to make the design rights system more user-friendly. Some of the most important changes in the act deal with design right protection. Design rights protect original 3D designs, which are not covered by copyright, trademarks or patents. They are particularly useful for creative industries in sectors such as furniture, home wares, packaging, footwear, architectural features and other 3D objects.
Any small business that has developed, or is promoting, a 3D design should think about design right protection. The recent Trunki case is a great example: if Trunki had not protected the design of its children’s suitcase with a design right it would have struggled to enforce intellectual property: trademarks would protect the Trunki brand, copyright would protect the surface design on the case and a patent might protect a unique technological feature (for example, a new locking mechanism) but only a design right would protect the shape of the case itself.
Design rights proceedings can be costly, and many small companies are keen to avoid throwing away good money on litigation, which is likely to be fruitless. A new service will be introduced giving parties a right to obtain a non-binding opinion from the Intellectual Property Office (IPO). If a business has a registered design that is challenged as being unoriginal, then the business with the registered design can ask the IPO for its view before going to court.
Infringement of a registered design is now a criminal offence, bringing design rights into parity with copyright and trade marks. A small business that has a registered design will be able to report those who are producing or selling “knock-off” designs to the police, as well as pursuing its own action.
Another important change, and one that may set a trap for some businesses, is that when a business commissions a design from a third party, the designer will own the design right intellectual property (IP) rather than the business that has commissioned the work. A business that pays a designer (who is not an employee) to develop a product will not actually own the design unless this is specifically agreed.
Disputes between designers and owners do arise, the most famous recent example being over the Star Wars Stormtrooper helmet. Andrew Ainsworth, who was part of the original design team, sold reproduction helmets to the public and eventually prevailed over Lucasfilm when the supreme court of the UK agreed that the helmet was covered by design rights, which had expired, not by copyright.
Patent owners will be able to include a website address on patent pending or protected products rather than having to specify the patent number. The IPO will also have the power to revoke patents that are clearly invalid.
Thoughts for SMEs
For small businesses, the main issue is that ownership of IP in any commissioned work should be clearly agreed in writing in advance. The new act should bring into focus the importance of design rights, especially for SMEs. Designs are often overlooked in favour of the more well-known IP rights – trademarks, copyrights and patents.
Only a design right can effectively protect a 3D design. Unlike registration of a patent, which can sometimes be a lengthy and costly process, registration of a design right is usually relatively quick and inexpensive.’
Guy Wilmot is a partner in the corporate and commercial team at Russell-Cooke LLP