Some people look at a 3D line drawing and are incapable of seeing the 3D object; Representing transparency may answer different codes depending on the country; The same is true of texture; Dotted lines have shifted in their meaning over the years; Is colour an asset or a vulnerability?

… and so it goes on.

Never before have registered designs been such a necessity for brands to protect their exclusive products from copycats, lookalikes and dupes … and yet, the rules of the game still aren’t clear – as the public registers demonstrate so clearly.

• Filing a photograph or 3D representation is reassuring because you can easily correlate the representation with the object … what exactly are you protecting ? Have you isolated the part that is novel?
• Is it preferable to file a line drawing? But if so, should that line drawing feature all the details of your product?
• Are your restricting your protection when leaving a logo or a trademark on the drawing?
• What about the screws and bolts?
• To what extent should you/ can you anticipate what copycats will try to copy as the main feature?
• Should you be concentrating your efforts on the most “striking design feature” as an agent once told me … or should you focus coldly on “novelty” and “individual character”, anticipating at every line how the copycat will adapt and the way you will be enforcing it.

It is also worth asking yourself how you can limit limit costs. Unless you have an unlimited budget you simply cannot be filing designs the way you file a trademark:

• For one thing, your design will not be static. If it is successful, it will know many variations and facelifts. In the watchmaking world, you may start with a simple date window, but that same watch will go on to include a chronograph, a perpetual calendar, a moonphase and why not a minute repeater. Have you spoken to the designer to capture the essential features which compose the dial of the watch and will not change dramatically?

• A second thing to consider is the geography of your design portfolio. Doe it reflect your actual business priorities or are you realising that you have more designs in Lichtenstein and Monaco than in China? …. Have you ever brought an action in Lichtenstein or in China ? Turkey is probably on your list of many designs … and that sounds about right seeing the amount of dupes to be found on the markets … but have you ever tried to enforce a design in Turkey ? My experience tells me copyright will trump design every time in terms of strength and efficiency.

Filing is not an isolated act. It must be done in consideration of what you think you can actually do with it. In what countries can you effectively and EFFICIENTLY bring an action for design infringement? How do courts in each jurisdiction appreciate novelty, individual character and overall impression ? How much will it cost ? How many years will it take to obtain a decision? Will your designs be a tool in your online take down strategy? If so, should it answer certain characteristics?

Understanding how design rights can actually be used will help you save costs – not only in the future but right now.

Better to have a well crafted design in a few key countries than a bad design filed in many countries but which will ultimately be unenforceable.

15 years ago, I used to say designs were not a “mature” IP tool. 15 years later, it’s difficult to say that we are anywhere near adulthood …. But during those 15 years, we have learned to manage the limitations, target actions usefully, combine design rights with other tools to be more efficient, play across different jurisdictions. We have had to by necessity: designs are the only tools creative brands have to fight mass dupes and lookalikes.

Sometimes, brands will hesitate to use a registered design as a ground for action for fear of losing the title ….

But as lawyers, if we want the law to progress, we have a duty to use those tools and bring actions in order to educate judges further, build precedents which will feed into the existent and slowly but surely entice the industrial design right to an acceptable level of maturity which will make copycats hesitate before launching their dupes.

Mᵉ OLIVIA DHORDAIN
Avocate
21 August 2024