Written by Éamon Chawke | March 24, 2022
What is a ‘product’ anyway? Most of us understand the word product to mean ‘something that has been produced’ (i.e. manufactured or made). The EU law regulating the protection of product designs tells us that a product is any industrial or handicraft item, including parts intended to be assembled into a complex product with multiple components, and including packaging, get-up, graphic symbols and typographic typefaces. In other words, a ‘product’ can mean lots of different and varied things.
At Briffa, we work with people and businesses operating in a broad variety of sectors where understanding and identifying the different protectable parts of a product is essential (e.g. clothing, footwear, bags, jewellery and fashion, health, beauty and cosmetics, food and drink, art, craft and design, toys, games and children’s products, furniture generally, domestic products generally, industrial products generally, technology generally, and much more).
When advising clients in these sectors, it’s helpful to take a methodical approach and consider the full panoply of available intellectual property rights and how each one may be used to protect a particular product (or, more likely, to protect a particular aspect of a product).
Patents protect new inventions. Or, to put it another way, patents protect what products do (function rather than aesthetics). In order to be patentable, a product must be new (novel), inventive (not an obvious improvement to an existing product), and capable of industrial application (useful in industry).
In the technology sector, or with domestic or industrial products generally, it may be possible to secure patent protection for a new piece of equipment that performs a technical function or produces a technical effect which is new, inventive and capable of industrial application.
Designs rights protect new or original designs. Or, to put it another way, design rights protect what products look like (aesthetics rather than function). There are different types of design rights in different territories (e.g. the US equivalent of registered design rights are design patents). In the UK, there are (basically) two categories of design rights: registered design rights and unregistered design rights. Registered design rights behave a bit like patents in the sense that registration is required in order to secure the right and the design must be new (novel) in order to be valid and enforceable. Unregistered design rights behave a bit like copyright (see below) in the sense that registration is not required in order to secure the right and the design must be original (i.e. not necessarily new/novel, but not copied either; i.e. original in the sense that it ‘originates’ from the designer) in order to be valid and enforceable. Another important distinction between registered design rights and unregistered design rights is that the former protects both 3D and 2D design features (i.e. both the shape of a product, and its surface decoration), whereas the latter (generally) protects 3D design features only (i.e. the shape of a product, but not its surface decoration).
In the clothing, footwear, bags, jewellery and fashion sectors, registered design rights might protect the shape and overall appearance of a garment or a bag, or a piece of footwear or jewellery. In the field of art, craft and design, unregistered design rights might protect the shape of a bespoke product (unregistered design rights are often a useful/inexpensive way to protect bespoke pieces that are not mass produced).
Copyright protects a broad spectrum original creative ‘works’ (including in particular, for the purposes of product protection: graphic works, sculptures, collages, architectural works and works of artistic craftsmanship). As with design rights, the precise scope of the right varies from territory to territory (e.g. generally speaking, EU copyright law protects a broader spectrum of ‘works’ than UK copyright law). Unlike patents and registered designs, registration is not required in order to secure copyright protection, but the work must be original (in the sense that it must ‘originate’ from the author/creator of the work i.e. it must not be copied). One of the principal advantages of copyright is that protection lasts for a very long time (usually 70 years after the death of the author/creator of the work), relative to the term of protection afforded to patents (maximum 20 years), registered design rights (maximum 25 years) and unregistered design rights (maximum 15 years).
In any sector, copyright may be used to protect brand and marketing assets such as logos, fonts, photographs and video content. In the field of art, craft and design, copyright may be used to protect a hand-crafted product if it can be established that the product is a work of artistic craftsmanship. Similarly, with furniture and certain domestic products, copyright may be used to protect iconic pieces if it can be established that the product is not merely a functional product but also a work of artistic craftsmanship.
Trade marks protect brand identifiers (i.e. the words, logos, signs, symbols and other marks that customers use to identify and find a business and distinguish the products of that business from those of any other business). For the average business, its principal two brand identifiers are its name (e.g. Nike or McDonalds) and its logo (e.g. the ‘swoosh’ or the ‘golden arches’). Some businesses will have many more brand identifiers such as product names (as distinct from headline brand names e.g. Apple vs iPhone, Sony vs. PlayStation etc.), product logos, brand colours, advertising slogans and jingles, and so on. All of these brand identifiers are theoretically registrable as trade marks (provided that they are sufficiently distinctive and not confusingly similar to any prior rights).
In any sector, trade marks may be used to protect brand identifiers such as names and logos relating to a business or a product. In the food and drink sector, non-conventional trade marks have been proven to be especially useful (Coca Cola previously secured trade mark protection for the shape of the iconic Coca Cola bottle, Cadbury previously secured trade mark protection for a particular shade of the colour purple, and Mondelēz previously secured trade mark protection for the distinctive shape of the Toblerone chocolate bar). Similarly, with toys, games and children’s products, non-conventional trade marks have also been used to protect unexpected aspects of products (Hasbro secured trade mark protection for the signature smell of Play-Doh. No really, that happened. It is described as “the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.”).
Passing off prevents a business from availing itself of another business’s goodwill (i.e. the value attributable to its trade and reputation) by passing itself off as that business (or by passing its products off as products of that business). As with a claim for infringement of copyright or unregistered design rights, someone claiming passing off does not need to have sought or secured any registration in order to assert their rights. Instead, the claimant must demonstrate: that they have goodwill; that someone else has availed themselves of that goodwill through some sort of misrepresentation which has led customers to be deceived as to the origin of a product (e.g. walking into Asda, picking up a Puffin chocolate bar, and purchasing it; all while thinking you were picking up and purchasing and Penguin chocolate bar); and that some sort of damage has been suffered as a result of that misrepresentation (e.g. dilution of goodwill or lost sales).
In any sector, passing off may be used to prevent copycat/lookalike products (i.e. a product with a name, logo, packaging or general get-up that is deceptively similar to the name, logo, packaging or general get-up of the genuine product that copycat/lookalike product is seeking to emulate). In the food and drink sector, passing off has previously been used successfully to prevent copycat/lookalike products (e.g. United Biscuits were previously successful in preventing Asda from selling Puffin bars which were found to be deceptively similar to its Penguin bars, and Reckitt & Colman were previously successful in preventing Borden from selling lemon juice in plastic containers shaped like a lemon which were found to be deceptively similar to the iconic Jif lemon containers).
Even if a product (or any physical aspect of it) is not patentable, not capable of registration as a design, not sufficiently distinctive to be registrable as a trade mark and not capable of protection by copyright or unregistered designs rights, the conception, design, development, manufacturing, launch, marketing and distribution of almost all products will involve the generation of some confidential information, which may be protectable through the law of confidence and/or contract law. Confidential information is any information that is not known to the general public and may include: product know-how and trade secrets; preliminary designs, plans and other information relating to a product; strategic plans for the development, manufacture, launch, marketing and distribution of the product; financial, customer and user data relating to the product; and so on. All of this information is potentially valuable from the perspective of competitors or investors who may wish to avail themselves of all this know-how. Accordingly, it should be protected by maintaining its confidentiality and controlling its disclosure/use by means of a non-disclosure agreement (confidentiality agreement) entered into between the discloser of such information and the recipient of such information.
In any sector, the protection of valuable confidential information including know-how and trade secrets is essential (indeed, in some circumstances, maintaining the confidentiality of the relevant information may provide a better, more cost-effective and a more enduring solution than a patent e.g. where pursuing patent protection is not a feasible option). In the technology sector, the law of confidence and contract law have been used effectively to prevent the unauthorized use and disclosure of confidential algorithms (e.g. the Google algorithm). In the food and drink sector, the law of confidence and contract law are often used effectively to prevent the unauthorized use and disclosure of secret recipes and other valuable product know-how (e.g. the Coca Cola and KFC secret recipes).
Now what?
In short, there is no single way to protect every aspect of a product. As is often the case in life, there isn’t a magic switch that you can push to achieve the desired solution. Instead, there are a number of switches; and the more of them you have at your disposal, the stronger your position.
The first step is to take advice, as early as possible, to understand and identify the options available to you for protecting as many aspects of your product as possible. Unfortunately, in the wonderful world of intellectual property, missteps in the early stages can be difficult and expensive to fix later (sometimes, they are impossible to fix later). For example, disclosing the details of a product too early may mean losing the ability to seek patent protection or registered design protection for that product later. Similarly, disclosing confidential information to the public will mean that information is no longer confidential, making it difficult or impossible to regulate its further disclosure or use later. Tolerating trade mark infringement or passing off for too long may make it difficult or impossible to take action later (i.e. if you ‘sit on your rights’ for too long, you may be deemed to have waived your rights or acquiesced to the infringement or passing off). And lastly, failing to put the correct contractual arrangements in place at the outset may mean that the designer, developer, manufacturer, consultant, freelancer etc. that you engaged to help you with your product, ends up owning certain intellectual property rights in that product.
Luckily, Briffa has a team of lovely lawyers who are intellectual property law experts. We offer free calls/meetings and IP assessments to all new clients who wish to discuss their business, product or idea. Contact us on info@briffa.com or 020 7096 2779 to book your consultation. We would love to hear from you.
We’ll start with a no obligation chat where we’ll get to know you and understand your current challenges.
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