Matt Hervey, director in Gowling WLG's intellectual
property team, discusses why many start-ups don't consider
design protection until it's too late. Matt offers some simple
tips on how to protect your market and generate brand
Dan Smith: Hi I am Dan Smith, a Director in
the IP Team at Gowling WLG and today I am joined by my fellow
Director, Matt Hervey. So Matt, why should designers consider
Matt Hervey: All businesses should consider
IP. It is what protects your market and what generates value. It is
what distinguishes your company from another company, be it a name,
an invention or a product design, and designers are creative
people. They are constantly creating works worthy of design
protection of value to their employers, to their clients, or to
Dan: And what basic steps should designers take
when considering IP protection?
Matt: Designers should at the very least have
an initial discussion with an IP specialist to explore if there is
an idea that is protectable.
They have to be aware that the public disclosure can actually
destroy the ability to protect some ideas, particularly if they are
seeking patent protection.
So if there is an invention worthy of patent protection, they
should make sure that they only make disclosures under a
You should also revisit the topic as you refine your design
because in our experience, as your design gets better, your
protection may actually become stronger.
Now many designers may feel that they do not have the funds to
actually enforce their IP but that does not necessarily matter
because owning IP may in itself create a perception of value in the
eyes of potential investors. It may also act as a deterrent in any
Dan: And what are the threats?
Matt: The key threat is that you may infringe
someone else's IP so, before you go too far with the product,
you should do some basic freedom-to-operate research and that would
be, at the very least, internet searches for your intended product
name and some market research into what the competitors are
You should also keep very thorough notes of your design process
because, if anyone ever accuses you of infringing their design, you
can then prove the independent process you took.
The other threat, particularly for a start-up, is that founders
often fall out, so any start-up should ensure that its IP is owned
by the company and that any IP generated by any employee or a
contractor is automatically assigned to the company.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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Trading under your name is an appealing idea, especially in the fashion world where designers frequently use their own names as brands (think Hugo Boss, Donatella Versace, and Tom Ford, to name but a few).
1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
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