The burgeoning trade of counterfeit goods online has raised the importance of intellectual property (IP) protection as a means for countering this nefarious practice. Previous articles on this topic covered trade marks and patents, so now attention is called to another area of IP: designs.

In general, a design right protects the visual appearance or shape of a product, or part of a product, not the product itself. By way of illustration, we now consider Apple’s flagship product, the iconic iPhone. The iPhone’s distinctive shape allows for design protection, whereas the various technologies that enable it to function give rise to patent rights.

Design Infringement

One of the key findings of a report published by the UKIPO was that 98% of design right owners have experienced infringement of their IP. A telling statistic that throws into sharp relief the scale of the acute challenges faced by designers when enforcing their rights.

E-commerce marketplaces like Amazon, eBay, and Alibaba have become a focal point of infringing activity. Changes in consumer behaviour has thrusted many companies into the digital age, leading them to open accounts on these platforms to sell their goods. Unfortunately, this trend has not escaped the attention of infringers eager to tap into these lucrative markets.

What recourse do designers have to challenge this trend?

In recent times, leading companies in e-commerce have made great strides in their approach to implementing sophisticated initiatives for taking down infringing listings. Taking Amazon as a case in point, Brand Registry and Utility Patent Neutral Evaluation were introduced to facilitate the enforcement of trade mark and patent rights, respectively.

Conversely, procedures for asserting design rights are much less developed. Each platform adopts an uncomplicated reporting mechanism; an offending listing is identified, a report is sent to a dedicated department, and providing a design registration certificate is furnished – more on this to come – the listing is removed.

What does registering a design entail?

Registration of a design is not automatic, it is a process that begins with lodging an application at a country’s IPO (Intellectual Property Office) where it undergoes examination to establish if the application has met certain formality requirements. At that point, the design registration certificate issues.

Design protection is territorial, meaning individual applications should be filed in each country/territory you wish to be formally protected. Cost and timescale of registering a design is not consistent, often varying greatly according to official fees set by an IPO.

Final thoughts on protecting design rights online

Please give careful thought to the foregoing and key points below:

  • registered protection for your designs is quick and inexpensive relative to other forms of IP protection.
  • it is strongly advised that legal advice is sought prior to launching of a new design publicly, thereby ensuring protection is secured. Certain legal systems have legal time limits triggered by the public disclosure of designs. This is the so-called “grace period”. In the UK and the EU this period lasts 12 months and an application must be filed in this time or the designer risks losing the opportunity to validly register their design.
  • a registered design is the most effective strategy to online counterfeited goods that infringe design rights. Nothing else but a registration certificate will be acceptable as evidence for the major online marketplaces to remove a spurious listing.

This article (and any information accessed through links in this article) is provided for information and educational purposes only. This article does not constitute professional legal advice. Professional legal advice should be obtained before performing any action based on the information provided in this article. All professional legal advice will be given in accordance with Creation IP Terms of Business. Please contact us for further information.

In the final article in our e-commerce series, Associate Andrew Couttie discusses some of the basics of designs rights online.

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