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Design law protection in the digital marketplace

Whilst copyright and database rights are the IP rights most associated with the protection of software and digital content, design rights can offer real benefits to the digital sector if used and invoked appropriately. This is particularly so since the registered design right is relatively cheap and quick to obtain.

September 2013

The Apple/Samsung litigation has highlighted the powerful role these rights can play in protecting the aesthetic features of physical IT products. Design rights can also be used to protect the look of user-experienced designs, such as icons, game characters or features and user interfaces.

UK and Community Design Law

Designs in the UK are protected by five legal rights: EU registered design rights, EU unregistered design rights, UK registered design rights, UK unregistered design rights and artistic copyright.

copyrightEssentially, the two registered design rights are the same with only their geographical remit being different. In order to qualify for a registered design there must be a design that is new, has "individual character" and is not dictated by the technical function of the product. Infringement takes place if a third party, without the consent of the proprietor, uses the design or any design which "produces the same overall impression on the informed user". The quoted words have been the subject of much case law which (largely) clarifies their meaning.

The unregistered rights arise automatically, without the need to fill out forms or pay fees, but provide only short-term protection against copying. The benefit of registration is to secure a  monopoly without the need to show copying (read more about design rights).

Apple v Samsung

The aesthetic elements of digital products, such as the design of a smartphone or a user-interface, are relatively easy to copy. Apple, seen by many as the smartphone and tablet 'pioneer', has been enforcing its registered design rights against Samsung in their high profile, worldwide dispute. As it currently stands, both companies have about as many decisions in their favour as the other. Apple has succeeded in the United States in obtaining a decision stating that Samsung has infringed its design patents and was able to obtain a temporary injunction in Germany.  However, in the Netherlands and in the UK the courts found in Samsung's favour. Recently, OHIM held that Apple's Community registered designs were valid, after an application for invalidity was applied for by Samsung.

The lead judgment in the English infringement appeal decision came from Sir Robin Jacob (coming out of his judicial retirement). It gives a helpful resumé of the law as it stands. However, save as regards clarifying the impact (or not) of incorporating branding features within a design, it does not change it. The main points were:

  • penThe comparison must be between the design as used and that as registered.  Apple relied on a registration dating back to 2004 (an "aeon ago in terms of computers" per Sir Robin).  That is key since the scope of protection is determined purely by the drawing in Apple's registration. That was not an exact image of the iPad as we know it now, or even as it was in 2004. Had Apple filed design protection as their iPad designs evolved, the outcome might have been very different.
  • Such a comparison did indeed create a "different overall impression" for the "informed user" of tablets.  Essentially (to borrow from the terminology of the first instance Judge), Apple’s “fat but cool” look left a different impression from Samsung's “thin but uncool” look.  The latter differed sufficiently in terms of thickness, edge shape and lack of simplicity of the front and back of the tablet design.
  • Words or branding within the allegedly infringing design can be taken into account but only as regards their overall visual impact, i.e. without ascribing any meaning to them (confusion as to trade origin being a matter for trade mark law). 
  • Losing claimants can be ordered to publicise an adverse decision of the court at their expense.  This is the reverse of the visual order made against a losing infringer. It ups the ante for those thinking of suing in the EU, although will probably only be rarely ordered. The Appeal Court held such publicity was needed here because of the confusion created by Apple’s litigation in Germany and the publicity surrounding that.  UK retailers and consumers needed to know that Samsung’s tablets did not infringe. 

Design Protection Strategy

check boxDesign law can be an effective tool in securing a competitive advantage and maintaining clear blue water around visually innovative creations. Some points to bear in mind when considering using design rights to protect the visual aspects of digital products:

  • Consider registering your key designs as this can provide stronger protection for a longer period with relatively little cost (it is effectively a deposit system with minimal or no examination or prosecution process like for patents and trade marks).
  • Apply for the relevant design protection preferably before it becomes public knowledge although you can wait for up to a year in the EU (to see if the product is a commercial success).
  • Consider registering not just the design as it currently looks but also the design as it might look in the future as if technology were to evolve (e.g. if future technology would allow different dimensions or looks). This helps ‘future-proof’ the protection (the Apple case show this impact this could have had).
  • If your product or design incorporates a number of innovative new look elements, it is worth protecting each such element as well as the whole thing (multiple designs can be included in one application which reduces the incremental cost per design). Unregistered rights may help here but it is always better to have the option of relying on a registered right.

If you have any questions on this article please contact us.

Digital law protection
Roland Mallinson

Catherine Ferrity


 


Roland Mallinson and Catherine Ferrity review the powerful role image rights have in light of the Apple v Samsung case.

"If your product or design incorporates a number of innovative new look elements, it is worth protecting each such element as well as the whole thing (multiple designs can be included in one application which reduces the incremental cost per design)."