Many designers see products being marketed that look similar to goods, drawings, photographs or mock ups that they have produced in the past. There may also be some grounds for suspecting that there has been deliberate copying of their earlier design. What can be done in such a case?
There are a number of rights that a designer may have by virtue of the fact that the designer has created the design. These rights can be invoked separately or cumulatively if the facts so permit.
Artistic copyright can be claimed by any author or co-authors that have produced an original artistic work. An artistic work includes drawings, photographs, sculptures, and models of buildings as well as works of artistic craftsmanship. Handicrafts are also included. Protection is available against conscious or unconscious copying of a substantial part of the work. So taking parts of earlier designs and reworking them is likely to infringe artistic copyright. Protection lasts for the life of the author plus 70 years after the author's death. It is important to know that infringement is broadly defined. Taking a 3 dimensional finished product – a chair for example – and disassembling it to be able to build a copy will infringe copyright in any of the author's original design drawings even if the infringer has not seen or used the original design drawings. Proof that the infringer has had access to the artistic work is difficult – putting drawings on the internet is tricky because while this might suggest access has been given to all, it increases the chance that others might filch the design. Designers should mark all products or designs with the name of the person or company who hold the rights. Copyright exists without the need for registration or payment of fees. Proof of ownership of the copyright will be required to be able to enforce rights.
Registered design rights are also important enforcement mechanisms. Designs for all number of products can be registered with either the Irish Patent Office or the European Union Office for the Harmonisation of the Internal Market (OHIM) to get either an Irish registered design or Community registered design. Registration is made in respect of classes of products – Class 2, clothing or haberdashery for example could overlap with class 32 which includes surface patterns and ornamentation so the existence of different classes may require a design to be entered in each relevant class. While design registration gives a monopoly for 25 years, there are fees to pay (unlike copyright). Some designers may 'test market' a design and this possibility operates for up to 12 months. After 12 months, if the design is not registered, it loses all chance of registered design protection as it is no longer novel.
Unregistered design right is available under EU law in recognition that many designers cannot afford to register designs. Unregistered design rights lasts for 3 years after the design was made available to the public anywhere in the EU. In order to make a complaint about infringement succeed it will be necessary to show "the design produced by the alleged infringer does not create a different overall impression on the mind of the informed user". Like artistic copyright, some copying may be lawful in the sense that copying is admitted but the alleged infringer may successfully "design around" the original, adding new features that distance the later work from the original. The recent Dunnes Stores/Karen Millen case involved unregistered design rights.
There are overlaps between artistic copyright and registered design rights in the sense that if an artistic drawing is later used as a model to make goods on an industrial scale (more than 50 copies) artistic copyright will lapse after 25 years unless the artistic copyright is claimed for something truly artistic (e.g. a work of artistic craftsmanship such as a Philip Treacy hat or bag, a Chanel dress, etc.)
Finally, copying the packaging of a rival product using similar colours or logos might be actionable in copyright but there are separate common law rights to stop one trader from passing off goods so as to look like the goods of another trader. The Irish Supreme Court gave the McCambridge Bakery an injunction against Brennan's in respect of brown bread packaging in recent months. Trade marks registration should also be considered if the business really takes off!
These comments on Irish Law are generally accurate of UK law also although UK Law has a separate 15 year unregistered design right. Generally speaking, the complaint should be made in the country where infringement occurs.
This article contains a general summary of developments and is not a complete or definitive statement of the law. Specific legal advice should be obtained where appropriate.
