Making the Most of Designs

Intellectual property (IP) is like a “quiver full of arrows,” according to David Stone, Partner, Allen & Overy LLP (UK), and businesses should consider all of the options available to them when looking to protect their product designs.

Mr. Stone made the comments at the on-demand session Design Pragmatics: How to Protect and Enforce Your Product Designs—Design Protection Protocols in the U.S. and the EU, which is being offered on the Related Rights educational track.

As more companies become part of the wider electronics sector, designs are proving to be an important consideration, even for IP owners who may have had little need for them in the past.

Lisa Ritchie, Senior Counsel, Philip Morris Products S.A. (Switzerland) (PMI), pointed out that its tobacco-heating system, IQOS, now makes up more than 10 percent of the company’s sales. “As a consequence, technology has become absolutely core to our business,” Ms. Ritchie said, and the impact on the company’s IP strategy has been “simply transformative.”

Since 2009, PMI has gone from having a “few hundred” designs to a portfolio of “thousands and thousands,” she said. These range from electronic devices, to logos, and aspects of product packaging.

Any company following a similar path will need to consider the full suite of IP protections available to them, including designs.

“Design patent law is not high on the list of pressing matters for Congress to address at the moment.” - Robert Katz, Banner & Witcoff

“In the case of designs, the first questions you should ask the marketing team are: What is new about this product? What is innovative? And what are third parties going to want to copy? That will give you a real sense of where you should be focusing your design right registration money,” Mr. Stone said.

The factors to consider when filing for a design right vary by jurisdiction. For example, noting how quickly technology can evolve, moderator Joseph J. Conklin, Senior Vice President, Global Deputy General Counsel, Coty Inc. (US), asked the panel whether design protection is limited to what you file, or whether the designs can be updated and still enjoy a level of protection.

Robert Katz, Attorney, Banner & Witcoff, Ltd. (US), explained that some jurisdictions, such as Japan, allow for evolutionary protection. But in the United States, and most other countries, “you are locked into what you file.”

In the case of the European Union, Mr. Stone confirmed, “What you file on the day that you file is it.”

One “big difference” in the EU compared with other jurisdictions is “just how inexpensive it is to file a registered design,” he added. That means an €80 (US $94) filing fee can allow your design to cover a market of almost 450 million people.

“In the case of the European Union, what you file on the day that you file is it.” - David Stone, Allen & Overy

Marketing Assistance

The evolution of companies’ IP strategies to incorporate rights such as designs isn’t a challenge just for the legal departments. Panellists stressed the role the marketing team can play, not just in building the brand, but also getting design rights over the finish line.

“PMI’s marketing team is familiar with trademark protection, and our research and development team is familiar with patent protection,” Ms. Ritchie said, “but what is new to both teams are the protection possibilities provided by designs.”

That’s not to say that product configuration trademarks and trade dress aren’t still an important part of protecting product designs, especially in the U.S. where, Mr. Katz said, the bar for attaining these rights is “much lower than it is in Europe.” Here too, a well-informed marketing team can make all the difference.

Taking the example of the Happy Ghost Rum Bottle, an award-winning concept designed by Russian graphic designer Pavla Chuykina, Mr. Katz emphasized the contribution the marketing team could make in securing trade dress rights through what he calls “look-for” advertising.

“When you’re selling the rum, say ‘look for the ghost in the bottle’—some ‘look-for’ advertising that will buttress your design rights,” Mr. Katz said.

“The success helped convince company management that design rights are an extremely worthy investment.” - Lisa Ritchie, Philip Morris Products

“I’d also say, ‘By the way, don’t mention anything functional about this bottle—don’t say that it helps you hold it better while you pour.’”

On the enforcement side, the panel discussed remedies for infringement design rights in their respective jurisdictions.

In the U.S., there is a growing problem of infringing designs getting through customs because infringing trademarks are applied to the products after the counterfeits arrive in the country, according to Mr. Katz.

He noted pending legislation before Congress to strengthen the rights owner’s hand when it comes to blocking infringing designs at customs, but suggested that design patent law is not “high on the list” of pressing matters for Congress to address at the moment.

The enforcement outlook is more positive in Europe, where the experience of PMI demonstrates the power of design rights. Ms. Ritchie said the company had been able to deal with a “particularly severe commercial” threat related to a device that infringed design rights for one of its IQOS products.

It obtained injunctions in China and Europe, including a pan-European preliminary injunction at the England and Wales High Court on May 11, 2020.

“The success helped convince company management that design rights are an extremely worthy investment to protect our innovations,” Ms. Ritchie said.

This session is available on demand to Annual Meeting & Leadership Meeting registrants now through January 10, 2021.