Niall Head-Rapson, partner and IP specialist with McDaniel and Co continues his discussion on the IP rights of designers and manufacturers ...
In the first article I introduced Intellectual Property Rights to you. Just a reminder that these are rights which allow you to prevent others from doing what you do.
There are two broad categories of Intellectual Property Rights. These are those that arise automatically and those that require some formal registration.
You also need to understand that Intellectual Property Rights are territorial. They have to exist in the country you are interested in. So I will discuss the rights that affect the UK – which is where I assume most of you produce your furniture.
If we start with the rights that arise automatically …
Unregistered rights
What you, as a business owner, need to know is what they are, how they happen and how you identify those rights in order to ensure that you own the rights and are able to control their use. The following rights arise automatically as long as they are original.
Design right – although you may put a lot of effort into creating your designs, it is mainly the shape of your new furniture which is the focus of these rights. This is because the law differentiates between functional shapes and artistic shapes and furniture mainly falls into the functional category.
There are two types of design right which affect the UK. There are EU Unregistered Design Rights and UK Unregistered Design Rights. The EU Unregistered Design Right lasts for three years and covers all of the member states of the European Union.
UK Unregistered Design Rights last for essentially 10 years but in the last five years that the right exists is what is called ‘the Licence of Right Period’. In this period anyone can make your product as long as they pay you a royalty.
Copyright – this is probably the right that most people have heard of.Can I copyright my product? Copyright protects the patterns or surface decoration that is on your furniture. It mainly protects two-dimensional rights such as any textile patterns or ornamentation.
However, if you create intricate handmade furniture then you might be protected by copyright. The test is whether the furniture qualifies as an artistic work or not. It isn’t an exact science and each article has to be judged in turn.
The obvious advantage of copyright is that it lasts substantially longer than design right. It lasts the life of the author – the person who created it – plus 70 years after their death.
Copyright will also cover your promotional material such as photographs, brochures and web sites.
One of the key issues is knowing who owns the design or copyright. The same basically applies to both so the person who creates the work is the first owner of the right.
If the author is an employee, generally the employer owns the rights. If the author isn’t an employee then in order to own the rights it has to be transferred to you by a contract – this is called an assignment.
You will also need to have a record to when the Design or Copyright was created and when it was first marketed.
Registered rights
The big advantage of a registration is that if someone does what you do there is no requirement to show that they knew anything about you.
Registered designs – instead of lasting for three or 10 years, registered designs can last for 25 years. And you don’t have to let anyone make your product if you don’t want to. There are two places you can register your designs. In the UK only, which costs £60 – plus agent’s fees – or the EU which costs €350. Both costs reduce if you have more than one design and you register them all at the same time.
Trade marks – this is to protect the names of your products, the name of your business and the logos and the branding that you use. If you register them then they can last forever. They will help you control people advertising as you on the internet which is a common complaint these days. The first trade mark – the Bass Red Triangle – was registered in 1876 and is still registered now. The basic cost in the UK is £200 plus agent’s fees. The basic cost for an EU registered trade mark is €750.
Patents – please don’t dismiss patents out of hand. Patents cover inventions such as a new way of making something, an innovative mechanism or a new tool. They last for 20 years.
Knowing and controlling all of the above will help you control your business.
This article was originally published in Furniture Production magazine, issue 233.
