The August issue -- and the great design conundrum

Although we are only one week into July, the August 2011 issue of the Journal of Intellectual Property Law & Practice is already available to subscribers online. You can check the contents of this issue here. Non-subscribers are reminded that they can purchase access to JIPLP features on a pay-as-you-access basis.

The editorial for this issue focuses on the vast international muddle which is design protection and asks what can be done about it.  It reads as follows:

Design protection: back
to the drawing board? 

"The great design conundrum

What should be done about the protection of designs? Practitioners, judges, and academics cannot even begin to discuss this without demanding further particulars. They will, for example, ask: ‘What do you mean by “design”?’; ‘Are you referring to industrial, aesthetic, functional, or ornamental creations?’. And they will not be wrong to do so, since, unlike trade marks, patents, and even copyrights, design law seems to have no coherent and generally accepted theme in terms of its subject matter and objectives.

A quick survey of design law reveals the degree of chaos to which this topic has sunk. Designs may be registered or unregistered; they may be protected by patents or by sui generis rules; they are sometimes registrable as trade marks, other times protected by regular artistic copyright. The Paris Convention on the Protection of Industrial Property offers little guidance. The Agreement on the Trade-related Aspects of Intellectual Property Rights (TRIPS) contains less on design protection than on the protection of the names of alcoholic beverages, and the Office for Harmonisation in the Internal Market, which administers the registered Community design system, appears to attract unmeritorious and indeed theftuous registrations that cause great inconvenience to honest traders.

Within industry itself—big industry at any rate—one rarely hears calls for better or more consistent design protection. As between sectors there is no apparent harmony of approach either. In one form or another, and in one jurisdiction or another, design protection may cover, or refrain from covering, subject matter as disparate as fashion garments, semiconductor topographies, kitchen utensils, lamp covers for street lights, and the organization of modular units for a temporary bus station.

Small- and medium-sized enterprises (SMEs), as well as micro-enterprises, have been increasingly calling for more and better protection for designs. Yet it is unclear whether this is even worth achieving for them. In so many instances, the protection accorded by a design, whether registered or not, is so narrow that a competitor can lawfully and confidently make a few changes and sell a similar product without fear of legal action. Designs take time and effort to register and are usually of short-term protection unless renewed. Litigation is expensive and uncertain. So why bother at all?

Yet if design protection is not an adequate barrier to market entry by me-too competitors and it is expensive to obtain and enforce, it is still desirable—if only because it sends out the message that a design is an intellectual asset and enables even the smallest, least resourced SME to claim the moral high-ground and say ‘I've created this through my own effort and ingenuity; you've taken it for nothing and are nothing but a commercial parasite’. While many members of the public view shoplifting from big stores and major chains as a harmless activity, a victimless crime, and there is a widely held view that anything available online is ‘fair game’, it is possible to stir up sympathy for the underdog by drawing attention to the well-documented help-yourself activity which characterizes the attitude of many larger businesses today.

The point is this. By stirring up sympathy for the designer as underdog, we can do something to influence public attitudes towards IP. Only where, and when, the misappropriation of the creative products of others is generally regarded as morally wrong will we start to change things.

In a recent seminar at the House of Commons in London, Germany was heralded as a country in which the populace appears more than most to respect IP; it is also a country which has developed a sophisticated civil wrong of unfair competition. The psychological dimension of even the name ‘unfair competition’ cannot be underestimated, since it sends out a message that it governs conduct which is inherently unfair. There is no such message in design law, where the word ‘unfair’ is not found and which, both in Europe and in many other jurisdictions, buries its principles beneath a morass of technical detail from which morality struggles to emerge".