Recently, Australian coffee cup innovators KeepCup launched Federal Court proceedings against Gloria Jean’s coffee chain claiming infringement of their certified design rights to their KeepCup Brew cup. Gloria Jean’s has been selling a similar looking reusable cup at a lower price point through its cafes featuring noticeably similar elements, including the lid and wrap around band (to prevent burning) but on first impressions, there are also differences in the Designs, such as the shape and dimensions of the glass (you can see the two side by side here). It will be an interesting case to see play out since design infringement cases are relatively few and far between and both parties seem to be well-placed to engage in the battle.
As far as IP rights go, Designs fall in the awkward middle ground between Trade Marks and patents and are generally not well understood. Here are 10 tips to help get the best out of the design registration system.
1. Why Do It? The best reason for protecting your Designs is that you have created a truly innovative and unique product which is visually appealing and which others may naturally wish to copy. The more unique and innovative, the more enforceable your rights will be. If there is nothing else in the market quite like your product, that is a good sign that you should seek design protection. Securing a registered design is relatively inexpensive and usually straight forward. If it’s worth copying, it’s worth protecting.
2. Is Design Registration the Right Form of Protection? Designs are meant to protect the visual look of your product, not its functionality. Purely functional elements of your design will be discounted when determining whether the design should be certified (enforceable) and also when determining whether infringement has occurred. Taking the KeepCup as an example, there are necessarily functional aspects that this design must serve. The cup must be able to contain the coffee, the lid must prevent spillage and the wrap around band must prevent your hands getting burnt. But there are design flexibilities which allow those functional aspects to be achieved in aesthetically different ways. If you are more interested in protecting the way your product works rather than the way it looks, it’s worth considering patent protection instead.
3. What Products Are Suited to Design Registration? Unlike Trade Marks, which can last forever, the maximum term of a design registration is 10 years (however see point 9 for a clever trick to extend this term). That gives a finite window to exploit your monopoly. It also means that design registration has more value for high end products which have a long shelf life and which are not subject to seasonal trends. If a particular design is the cornerstone of your business (as with the KeepCup), it’s certainly worth protecting, but the decision is more difficult where your business relies on multiple constantly evolving Designs (as in the fashion industry). A good indicator to work out if it’s worth it is to look at similar successful products from 5 or more years ago and see if they are still being sold in more or less the same design today.
4. Simple is Best: The best Designs are those which focus on a single simple element (take for example, the humble paperclip). It’s easy to compare a single feature against another single feature on a competing product. Designs become weaker and less enforceable where a product has multiple design features all of which are vying for attention. It makes it easier for competitors to build workarounds by simply tweaking or replacing some elements while keeping others the same. Which takes us to the next point…..
5. Break It Up: A design can hone in on individual components of a product rather than the design as a whole. Therefore applying for multiple Designs on individual components can be preferable to applying for the design of the whole product. The proviso to this is that sometimes while individual components may not be sufficiently new and might not be capable of protection, the combination of those elements may be. That’s something which needs to be worked out with your design Attorney to ensure you are protecting what you want to protect.
6. Keep it Secret Until You File: The essential component in obtaining an enforceable design is that it must be new at the time of lodgement. This means that the design will be compared against whatever similar Designs can be located at the time of filing. That means anything that has existed at ANY TIME from AROUND THE WORLD (so long as the Examiner can locate it). It also includes YOUR OWN PRODUCTS! That means that if you launch or publicly disclose your product before you register the design, your design may be invalid or unenforceable. Anyone who you are working with to develop your design, should sign a non-disclosure or confidentiality deed before being granted access to your design drawings or prototypes.
7. The Deterrent Effect: The term “Registered Design” is a misnomer. To obtain a registered design, you only need to pass a formalities check and there won’t be any searches conducted against the prior art. A design only becomes enforceable once it has been examined and “certified”. Examination is not compulsory and the large majority of Designs simply remain registered and are never examined. Why? The simple reason is that the simple fact of registration can often be a sufficient deterrent to prevent other manufacturers from copying a design. It’s preferable for designers to seek examination of their Designs once a possible infringement has occurred rather than risk invalidating their registered design by seeking examination.
8. How Enforceable is My Design? A registered design is as effective as it is innovative. To illustrate, let’s go back to caveman times. If the best hunting weapon available is the rock and you invent the spear, your design registration will enable you to prevent others from producing practically any type of spear, even if not identical to yours (NB: it’s a little known fact that cavemen had an operational design registration system- no need to Google it!). If however spears already exist and you invent a spear with a different shaped spearhead, you wouldn’t be able to prevent others making spears but you would be able to prevent them making spears with spearheads similar to yours. So the more different your design is to what has come before, the more scope there is for infringement. If a minute change has been made to what already exists, then it will also take a minute change to get around infringement.
9. The TM Tag Team Method: I mentioned earlier that design registrations only have a finite term of 10 years. But potentially, your protection can be extended by registering your design as a shape Trade Mark once it’s approaching expiry. Whereas design protection can be killed by prior use, shape Trade Mark protection actually thrives and relies upon prior use. That means if you have taken sufficient steps to commercialise and market your design during the term of protection to an extent that the public associates your design with your brand, this will assist in obtaining registration of your shape Trade Mark and will obtain similar rights to prevent traders from continuing to use that design, potentially forever.
10. Lawyer Up: A bit of a self-serving one, but in all honesty, the Designs Register is absolutely littered with design registrations which are entirely unenforceable and a complete waste of the filing fee because they have not been done correctly or should not have been filed in the first place. While it seems straightforward, it’s worth investing in doing it properly rather than find out you have a useless design when it comes time to try to enforce.