Infringement and protection are grey areas in many professions, and none more so than the design industry. Curve editor Belinda Stening spoke with Cameron Harvey, a Partner at Deacons law firm in Melbourne and head of their National Intellectual Property Group, to get the inside story on the legal issues surrounding intellectual property.

While Harvey outlined the pros and cons of seeking protection for a design and/or taking legal action against an offender, he recommended high profile branding and a strong marketing campaign as key considerations.

“If the product range is a dynamic one and the demand quite fluid, designers and manufacturers must ask themselves whether it is prudent to focus more on the brand or on the product itself.”

But Harvey agrees there are times when a designer will naturally want to protect the shape or configuration of a product against those who seek to copy it.

There are a number of ways product configuration or design can be protected under Australian law. However, given the legal complexity and cost involved in obtaining and enforcing such protection, it is arguable that building and protecting the brand that is behind any product or product range is one of the more effective ways, from a commercial perspective, of ensuring that a product maintains its market presence and ‘original’ status.

Harvey says designers and manufacturers alike must perform a legal and commercial balancing act. “Although a product’s unique shape may be protectable by registering a design, or its novel function is capable of receiving patent protection seeking, obtaining and enforcing legal rights is a costly exercise and in many instances time consuming.”

In many cases, statutory rights (such as registered designs and patents) may not become registered for a considerable period of time after the launch of the product. Rights regarding infringement will then date back to the date of filing the registered design or patent, despite the product having already passed its ‘use by’ date in the market place.

Given the dynamic nature of most markets within which designers and manufacturers operate, coupled with the fickleness of consumer preference and demand, decisions often have to be made about investing valuable management time and financial resources in seeking protection for the product itself, as opposed to investing the same time and resources in the ongoing development, maintenance and strengthening of the goodwill in the brand that carries the product.

Harvey says prudent designers and manufacturers should ensure reasonable enquiries are made to ensure that third party intellectual property rights, among other rights, will not be infringed by the design and manufacture of any contemplated product.

“Most designers and manufacturers will know their industry and have a ‘gut feel’ for what their competitors are doing and whether or not the ‘unique concept’ that has been developed is revolutionary, or instead may be so similar to another product so as to cause concern,” says Harvey.

In other words, is the product’s shape, configuration or function something unique, or is it merely a ‘derivative’ of another already on the market?

“The majority of designers and manufacturers are familiar with the basic concept of intellectual property protection and infringement and, importantly, understand their own industry,” said Harvey.

“Many will seek advice regarding the protection of new products and also the infringement of other parties’ rights. However some don’t and this can cause great legal and financial difficulties.” It is often too late to seek protection for your product’s shape or function after the horse has already bolted.

“The costs of litigation will, more often than not, significantly outweigh the costs that would have been incurred in either obtaining suitable protection at the outset or undertaking the necessary enquiries to ensure third party rights weren’t being infringed,” said Harvey.

Designers and manufacturers should develop a checklist or an audit procedure which each new product is subject to prior to either being developed or sent to market.

This would deal with things such as trade mark issues, domain name issues, statutory obligations such as registering business names or company names, seeking appropriate design registration (in relation to the shape of a product) or patent protection (for unique processes and methods of production). Trade Practices Act issues are also relevant.

Harvey recommends registers be kept of works that attract copyright protection, in particular ensuring that the identity of the copyright owner is clear and the date of creation is stored in a database together with a copy of the work.

“For example, without properly monitoring each new product as it is developed, designers and manufacturers may later find that the copyright in the design drawings is owned by the third-party draftsperson who prepared them, or that a rival company claims that your chosen brand name or logo is too close to its own.

“Whilst IP Australia is a very helpful government department and can assist when searching trade mark, design and patent databases, searching these is a skilled art and, in particular, interpreting the results is critical when determining whether third party rights may or may not be infringed.”

Further, whether it be brand related protection (trade mark registration and domain name registration for example) or a patent right, a decision must also be made about in which other territories registration should be sought. Given the global nature of our markets, it is unlikely that registration in Australia alone will be sufficient.

This must be built into the cost benefit analysis prior to the development and launch of the product. Information, product details and consumer feedback can be readily obtained from the Internet regardless of location. However, certain rights are limited to the jurisdiction within which the registration has been obtained.

Export markets must be considered. If the product is to be exported to the United States or Europe, then suitable protection must also be sought in these jurisdictions.

“Once rights have been obtained, the rights owner must also establish a manageable protection and enforcement policy to ensure that any infringing activity is immediately identified and suitable action can be taken.

"There is a cost to this but there is also a significant benefit, as a reputation can be quickly established as a designer or manufacturer that strenuously enforces rights and should not be crossed without due consideration,” says Harvey. “This has obvious ongoing benefits in controlling counterfeit activity.”

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