Design matters: industry professionals explore the lie of the land

London’s Design Museum provided the setting for a discussion on June 25 between lawyers, brand managers and design industry professionals about counterfeiting, brand management and how best to protect designs in a sector UK charity the Design Council estimates employs 230,000 to 350,000 in the UK, and turns over £15bn every year.

Bird & Bird hosted the seminar, which was opened by partner Allan Poulter, who said he had observed throughout his career the design law is often seen as a “poor cousin of IPR.”

It is important that lawyers understand the creative side of design, he said, noting that the UK lags behind Europe in its provisions for design protection. From a business perspective, bringing lawyers into the design process early in case you need to re-route is a wise decision, he said.

IP can help retain integrity of the brand, which Andy Payne of brand management firm Interbrand described as a “living business asset” that evolves with the company.

When Simon Terry, innovation and brand director for Anglepoise Ltd, joined the family business it had just 3 trademarks in its IP portfolio. It now has 30 trademarks, a design registration and patents to protect the Anglepoise brand, and its sprung desk lamp as seen in the logo of film studio Pixar.

While encountering unauthorised copies of the iconic lamp offered by cut-price retailers is an everyday occurrence for Terry, in terms of litigation he says “you have to pick your fights very carefully.”

Ewan Grist, an associate at Bird & Bird, described UK design law as a “real patchwork of overlapping and interlocking regimes”, which although “complex”, is also “flexible”.

He outlined the available options for protecting designs in the UK and proposed changes to the law, including the introduction of criminal sanctions for deliberate copyin of registered designs and the extension of UN-unregistered design rights to non-EU designers.

He added that the UK will soon join the Hague Agreement, which allows designers to register a design in all member countries or intergovernmental organisations with just one application.

Bird & Bird partner Katharine Stephens talked about how the UK Patents County Court has allowed smaller players to compete in the design sector, and later suggested designers share the risk with their lawyers if they’re prepared to take it on.