Ask the Expert: Protecting your design rights

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Advice on registering your designs to protect them from copycats.

They say imitation is the sincerest form of flattery, but not when it loses you money or risks damaging your brand’s reputation. Intellectual property solicitor Andrew Brennan offers advice on how to protect your jewellery from industry copycats and claiming through the UK’s Patent County Court.

Jewellery designers work hard to produce innovative, attractive and original designs. But if your designs have ever been copied, you’ll realise all that glitters is not gold.

The most valuable part of a designer’s jewellery is not the precious gemstone or metal from which it is forged, but the creative design that makes it unique.

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Intellectual property theft is rife in the jewellery industry and when someone else profits from all your hard work and creativity it can be both stomach-churning and commercially damaging.

Developing a better understanding of your intellectual property rights can help you reduce the risk of others copying your work, and deal more effectively with infringers.

IDENTIFYING AND PROTECTING YOUR RIGHTS
When creating a new design you should always think about intellectual property protection. In the UK, jewellery designs can attract a number of intellectual property rights. Some you have to apply for, others arise automatically.

Probably the most potent right is the registered design, with protection that can cover the UK or the EU. Registered designs protect new and individual features of a product (or part of it) arising from its lines, shape, contours, colour, texture, material or ornamentation, whether it be ornate rings or intricately-shaped bangles.

Registration gives you a 25-year monopoly during which time you have exclusive rights to exploit the design and prevent third parties from using it. Crucially, you don’t need to prove a competitor has actually copied your design to be able to successfully take action; owning the right is enough. Registration is relatively cheap and provided your design is new and has individual character, it is relatively straightforward to obtain.

But what if you don’t want to go to the expense of registering? You can also enter the unregistered design right, which rises arise automatically on creation or when recorded in a design document. They last for up to 15 years in the UK and three years in the EU. Be aware that when enforcing unregistered rights you will need to demonstrate that the infringer has actually copied your design. This can be difficult to prove. Infringers will often claim never to have seen your design or simply to have been inspired by it.

To ensure you get the maximum protection from unregistered design rights we recommend that you keep a clear written audit trail of the design from inception to final product launch. Each drawing should be signed and dated, and drawings or samples could even be photographed.

Particularly unique and special designs may also take advantage of the much longer copyright protection afforded to works of ‘artistic craftsmanship’. The threshold to qualify for such protection is very high. Protection is more likely where the item involves a high level of workmanship, is elaborately and intricately shaped or decorated, and is a one-off piece, such as Elizabeth Taylor’s La Peregrina necklace.

BRAND MATTERS
You should also consider registering the brand or collection names associated with your jewellery. It goes without saying that your brand is of paramount importance. People form relationships with brands they love, so the more successful your jewellery becomes, the more people will associate you and your jewellery with your brand. You can build on this brand, market it and tell stories with it through advertising and other marketing campaigns. This can build popularity and helps to maximise the sales potential of your jewellery.

Registering a trade mark is the most effective way of legally protecting a brand and preventing competitors profiting from it. A registered trade mark gives exclusive rights to prevent others from using it in relation to the goods and services for which it is registered. Registration is indefinite but marks will need to be renewed every 10 years in the UK and Europe.

In the absence of a registered trademark, the common law right of passing off can protect your brand if it has generated sufficient goodwill and reputation through use. You don’t have to be a household name to rely on passing off, as a generation of goodwill in a particular locality can often be enough.

JUDGE AND JEWELLERY: ENFORCING YOUR RIGHTS
Until recently, there wasn’t much that designers (particularly independents and small design houses) could do about the theft of their designs or trade marks, mainly due to the prohibitive expense of suing perpetrators. Things are starting to change however with a small claims track that has been introduced at the Patents County Court (PCC).

The small claims track through the PCC will mean that designers can obtain an injunction to stop their designs being used further and also be awarded damages of up to £10,000. The current small claims track covers passing off and copyright, registered trade mark and unregistered design right infringements. Registered designs are not currently covered.

At the moment the only PCC in the country is in London, but don’t let this put you off. The Court is prepared to handle claims remotely via telephone or in writing, offering a cost effective solution for designers who want to seek compensation for the misuse of their intellectual property.

It’s been a long time coming, but the new PCC process could potentially have a significant impact on the creative industry, not only for designers but also musicians, photographers and artists.

Solicitors are also responding to this change in the law by offering fix fee arrangements for the new small track IP infringement claims.

Andrew Brennan is an intellectual property solicitor at law firm SGH Martineau, which has offices in London, Birmingham and Brussels.

This Ask the Expert feature was taken from the October issue of Professional Jeweller. To read the issue in full online, click here.

 

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