What is a design

Dids Macdonald – BCFA Forum 30 April 2014
Chief Executive,
Anti Copying in Design (ACID)
Vice Chair of the Alliance for Intellectual Property
ACID, what we do and how we do it!
1.
2.
3.
4.
5.
6.
7.
Basics of IP law, an overview
Design Protection – decisions?
What to do if you are copied?
Using social media effectively if copied
ACID Marketplace
Guidelines for an effective IP strategy
The IP Bill, what does it mean for you?
Anti Copying In Design (ACID)
is a membership trade
organisation, set up as a round
table action group in 1996
Member sectors:
ACID – what do we do and how do we do it?
We champion original design, its protection and
enforcement and work on behalf of our members
as a leading UK campaign group for design law
reform.
Our 1200+ members are from diverse sectors
within design and we are committed to fighting IP
theft and safeguarding innovation to ensure that
tomorrow’s growth creators live in a safer trading
environment with job certainty
ACID was started by designers to protect, exploit
and commercialise IP. ACID is determined, via its
brand, to communicate DESIGN = VALUE.
100’s of settlements - 3500+ mediations
Intellectual
Intellectual
property
Property
= respect,
= respect,
ethicsethics
and compliance
and compliance
within CSR
CSR
“Design is what links creativity and innovation. It shapes ideas to
become practical and attractive propositions for users or customers.
design may be described as creativity deployed to a specific end”
Sir George Cox
DESIGN – its all around us, from design icons....
....to every day - solving problems, adding value, enriching
our lives as consumers....
“without creativity there is no culture, without design there is chaos” Sebastian Conran
The Creative Industries contribute £8million pounds to the UK’s GDP
every single hour....(£71.4 billion per year)
£8 million
..and growing at 10% per year!
1. Intellectual Property – why is it so important?
Intellectual capital is a critical asset, the DNA running through most
businesses whether small or large.
The majority of successful organisations are underpinned by intangible
assets – intellectual property or “IP”.
In order to identify and maximise this key asset, it must
be valued and leveraged as a recognisable USP for
key driver in mergers, acquisitions and investment.
IP can be traded, sold, licensed, franchised, used in
knowledge transfer, collaborative design – it is a tradable
asset
1. Intellectual Property – basic elements
IP (intellectual Property) - generic term for patents,
trade marks ® , design right and copyright – based
on property law
Registered rights – patents, trade marks, designs
– YOU PAY FOR
Unregistered rights – copyright, designs, trade
marks™ intellectual capital, know how, ideas,
confidentiality, unregistered rights – YOU DON’T
PAY FOR!
An owner must give permission for their use
IP is a property right - leasing, sale, sub-letting,
renting, sharing or…squatting?
1. Intellectual Property – an overview.
COPYRIGHT - What does it protect?
Novels, newspaper articles, technical reports,
manuals, databases
Engineering, technical, architectural plans, design drawings
and plans
Paintings, sculptures, photographs, diagrams, maps, original
musical works, songs, plays, dramatic works
Promotional literature, advertising, fabric design
Films, videos, cable or radio broadcasts
Computer software, dvds, videos
What does it NOT protect?
ideas, concepts or inventions
How long does it last?
Life + 70 – 25 years
1. Intellectual Property – Using Design Data Bank
ACID Case Study - Temple Island and New English Teas- image plagiarism
Provided vital evidence in the then Patent County Court case
1. Intellectual Property - What is a design?
lines
colour
shape
texture
contours
materials
ornamentation
What is a design - “design” means the
appearance of the whole or a part of a
product resulting from the features of, in
particular, the ...
WHAT IS THE VALUE OF
HAVING AN EU
REGISTERED DESIGN?
DETERRENCE!
You have a piece of paper which gives
you a monopoly right that lasts for up to
25 years and is enforceable in all EU
member states = £20 per year!
1. Intellectual Property - Case Study – options for design protection
Design right
Registered UK, EU (pay to register)
Unregistered UK, EU (arises automatically,
free!) – ACID Design Data Bank
WIPO Hague Agreement – many more
countries now signed up including soon UK
and USA
www.ipo.gov.uk
www.oami.europa.eu
www.wipo.org
1. Intellectual Property – Case study - having a proactive IP strategy
Case Study
Magis
Knocks offs discovered at exhibition
Letter Before Action
Delivery up of 1000’s of lookalikes – safety issue
1000’s knock offs destroyed
News story hit 400 stations globally
Communicated a Zero Tolerance to IP theft
Dids’other job!
1. Intellectual Property - Benefits of registered a design
Protection Allows you to take legal action to stop others
from copying, manufacturing, selling, and importing your
designs without your permission. Easier for a lawyer to
act for you because they don’t have to prove copying
Prevention By communicating your design registration
number on marketing material, packaging adds to the
deterrent effect & may be enough on its own to stop others
from trying to exploit your design
Design ownership allows you to:
sell the design and all the intellectual property (IP) rights
or license the design to someone else but retain all the IP
rights.
1. Intellectual Property - Trade Marks
A sign which is being represented graphically - A sign
which is capable of distinguishing the goods or services
of one business from another.
ACID trade mark a UK registered trade
mark and a Community Trade Mark
1. Intellectual Property - Benefits of a registered trade mark
Protection against competitors using your name.
Protecting your business from being accused of
infringing another company’s mark
Re-assurance for your marketing spend.
Valuing your IP asset Recording your asset in the balance
sheet.
Maximising business opportunities franchising or
licensing.
PROTECTION = PEACE OF MIND!
Bass Brewery's logo
became in 1875 the
first image to be
registered as a
trademark
1. Intellectual Property - Patents
“A patent essentially
protects an invention,
typically new or improved
products or processes in
the field of science and
technology. Patent
protection generally
covers functional or
technical features of
these products and
processes” Frederick Mostert “from
Edison to ipod”
Strong IP can help
defend your inventions
from copyists Dyson
2. Design Protection – The reality of taking legal action

You discover what appears to be a copy of
something you have created

Take action or not? (never sue on principle),
only if there is a demonstrable loss

If you have a registered UK or Community design, you have a
certificate which says, effectively, you “own the design”

If relying on unregistered design, you have to prove copying and
provide a compelling audit/design ownership trail from seed of an
idea to marketplace

Whether registered or unregistered IP rights consult an IP expert on
the strengths of your case
2. Design Protection – The reality of taking legal action

ACID members free legal opinion, depending on the complexity of the issue

If not you may get some initial free IP advice (ACID members benefit from
reduced hourly rates)

When IP Bill passed you can obtain a legal opinion for approx £200 from the
Intellectual Property Office www.ipo.gov.uk

Own a registered design? your lawyer will write a letter before action
claiming unlawful copying of your registered right. Your registered right may be
challenged

Rely on unregistered design right your lawyer will write a letter before action
and you must provide evidence of ownership. ACID members have free
access to a Design Data Bank specifically for this purpose
2. Design Protection – The reality of taking legal action

Majority of ACID’s hundreds of settlements based on unregistered
designs

However, we always recommend registering designs, whenever
possible www.ipo.gov.uk or in the EU www.oami.europa.eu

WHY? Because unless there are validity issues it will be more straight
forward to enforce your rights
3. What to do if you are copied Access to the Intellectual Property
Enterprise Court & Small Claims
Track, enforcement and basics of
IP law
3. What to do? Tips and Advice if you have to take legal action
Identify a quantifiable loss and consider your objectives.
What do you want to achieve:
An undertaking further copy products will not be
sold?
Damages to reflect quantifiable loss?
An admission of liability? Publicity?
Payment of your costs (or some of them?)
Always ask your solicitor if your objectives are
realistic or reasonable
3. What to do if you are copied? Access to Small Claims Track
Government has introduced a new Small Claims Track
This will assist those claimants wanting to sue on a
dispute worth less than £10,000. Costs will be capped at
that figure.
Government will continually monitor the working of the
track in the IPEC and will formally review this in 2014.
An ACID campaigning objective for SMEs
3. What to do if you are copied – Access to the Intellectual
Property Enterprise Court (formerly Patent County Court)
Aim of the PCC
The aim of the new Intellectual Property Enterprise
Court (formerly PCC) - to meet the needs of
small and medium businesses and individual
inventors by:
Reducing costs
Improving access to justice
Bringing the UK in line with other European
courts such as Germany
Aim was for it to be cheaper, speedier,
easier and more informal than High Court
4. Design Protection – An alternative? Using Social media effectively
SPOT THE DIFFERENCE STRATEGY!
“No, that’s not your eyes going funny. We
haven’t launched a bright pink version of
our Dinosaur Necklace. The necklace on
the left is Tatty Devine. The necklace on
the right is currently being sold by Claire’s
accessories”
4. Design Protection – An alternative? Using Social media effectively
Watch points:
Groundless threats
Defamation
“Spot the Difference?”
Result: speedy end to major high
street retail look alike - within 24
hours Claire’s Accessories removed
the alleged copy from their website!
WHAT’s THE BUZZ?
WHAT IS
ACID MARKETPLACE?
ACID
MARKETPLACE
IS A SAFER
ONLINE TRADING
CONDUIT
FOR DESIGNERS
&
DESIGN BUYERS
ACID Member
Design
Buyer
Design
Buyer
Benefits to ACID members
• You can use the ACID Design Databank to keep your designs safe,
secure and confidential or,
• You can invite selected buyers to view designs and product launches and
you can track who has viewed or,
• You can choose for your existing and new designs to be seen by all and
this provides you with a low cost, 24 hour exhibition opportunity
Benefits for Buyers
• Once registered, Design Buyers can be invited by Designers to have first
view of any new product launches, seasonal offers or new designs
• Buyers have access to a pool of design talent in one place
• Buyers know ACID Members create original designs and respect IP
• Buyers know all designs on ACID Marketplace are date recorded on the
system
Independent and retail buyers have the opportunity to support Great British
original design by agreeing to the terms of the ACID Buyer’s Charter.
How does it
work for
Designers
AND Design
Buyers?
I have registered and
agreed to the ACID
Design Buyer’s
Charter, now what?
Once you have registered
online you can
• view open designs on ACID
Marketplace
• ask to view new products
by invitation or
• contact an ACID Member for
more information.
It’s easy!!!
6. Essential elements of an IP Strategy
Rule No 1 – create one!
Positive communication
Internally and externally
website, T & C, marketing material,
product labelling
sends a clear message IP = value
Proactive not reactive
fire fighting v IP plan
what are the risk factors?
Discovering infringement – what do I do?
If you don’t want to be copied, say so, but how?
Prevention is better than cure!
“All intellectual property rights existing in our
designs and products are and will remain the
property of (insert your company name here). Any
infringement of these rights will be pursued
seriously”
Tout droit de propriété intellectuelle existant dans nos dessins,
modèles ou produits (et dans les images, le texte, les dessins ou
modèles du présent site Internet/matériel publicitaire ou
promotionnel) sont et resteront la propriété de (VOTRE NOM). Toute
violation de ces droits sera poursuivie vigoureusement en justice.
6. Essential elements of an IP Strategy
Education – become IP “savvy”
informed understanding within team
IP knowledge important whether micro or macro
Choose battles carefully
identify objectives – what do I want to
achieve?
NEVER sue on principal
Identify quantifiable loss
Expert opinion – assess strength of case
Publicise all settlements
7. Essential elements of an IP Strategy
Registrations
Create an IP Portfolio
Registered rights
Unregistered rights
consider professional document management
Asset for:
raising funding
investment
sale
exit strategies
Log designs with the ACID Design Data Bank
IT’s FREE!
Provides audit trail
Accessible record of designs
Independent proof of date of creation of
design
Supports deterrent effect of IPR and
ACID brand
Underpins unregistered IPRs
6. Essential elements of an IP Strategy
Trade Secrets/employees
Restrictions in employment contracts
Limit access to trade secrets
Confidentiality
Guard carefully
Create a protocol
Agreements for sensitive information
ACID IP Tracker
6. Essential elements of an IP Strategy
Agreements
clarity of IP ownership essential
small print to rely on
ACID Generic industry agreements
Always seek IP professional advice
Insurance
Expensive
No Fee No Win
ADR/Mediation
It’s good to talk
Alternative to litigation
6. Essential elements of an IP Strategy
Invest in the right IP advice
different lawyers will have different
IP skills + experience
Value of sector experience
solution-led proposals
commercial-led objectives
long term relationship – saves time + £
Arm yourself with IP knowledge
Be IP aware!
Watch competitors closely
7. The IP Bill – how will it help designers?
The designer will own the IP rights for commissioned
work, not the commissioner
There will be an Opinions Service costing £200
The UK will accede to the Hague Agreement
broadening the number of countries included for
design registration with one single application
There will be criminal provisions for intentional
registered design infringement? But why not
unregistered designs (UDR)
Professor Ian Hargreaves and Dids Macdonald!
What does it mean for you? If passed, the ultimate sanction for intentional
registered design infringement will mean the individual directors will be liable
and could face a criminal prosecution. The underlying objectives:
•To reduce the scale of registered design infringement by acting as a deterrent
•To increase protection for the holders of registered designs
•To better punish perpetrators of blatant design infringement
Thank you ......
Dids Macdonald
Chief Executive
Anti Copying in Design
Tel : 0845 644 3617
[email protected]
www.acid.uk.com
The Furniture Makers’ Company IS the British furnishing
industry’s charity and patron, which supports the education of
students by nurturing skills and expertise, provides help to those
in need and champions excellence.
www.furnituremakrs.co.uk