Grand designs

Author: Sarah Merrifield, Partner

In this industry, significant investment goes into developing new designs and, thanks to the drive to improve and harmonise design protection across Europe, that investment can now be safeguarded and maximised.

Design protection is concerned with the appearance of a product, rather than its function or technical characteristics, but it has developed in different and inconsistent ways across Europe.

A Directive aimed at harmonising European laws on design registration was scheduled for implemention in each member state by the end of 2001. Although not every state has yet done so, in many states including the UK sweeping changes to registered designs law have now taken effect.

Under the Directive, the definition of what can be protected by a registered design is very broad. A design for any aspect of the appearance of the whole or part of a product is eligable, and that includes not just its shape or a pattern applied to it, but also its colour, texture or materials. As well as a product itself, designs for the packaging and 'get-up' of products can be registered, as can graphic symbols. Furthermore a registration protects a design as applied to any item.

Innovations in colour and texture, for example, can now be protected more effectively.

If a known snack bar is developed in a range of new flavour combinations which are apparent as a coloured pattern on or within the bar itself, a registration could be obtained even though the bar's shape is already well known. Such a registration would protect the coloured pattern applied also to the packaging or a bar of different shape.

A registration of a design intended for the shape of a biscuit will also protect, say, a sticker or toy of the same shape sold in association with the product.

The 'get-up' of products, or a symbol or logo applied to them, can be protected across an entire product range with a single registration.

Of course, in the confectionery field, trade marks have always been relied upon - and are still the most appropriate - for protecting brand names and logos. It has also been possible to obtain registration for the appearance of products and their packaging as 3-dimensional trade marks. But, it can be difficult for any trade mark, and for 3-D marks in particular, to satisfy the requirement for the mark to be truly distinctive and recognisable to consumers. So, registration of product and packaging shapes as 3-D marks is still relatively rare.

To qualify for design registration, the test is different. The design must be new and possess individual character. That is, to an informed user, it must create a different overall impression to previously known designs. If these criteria are met, a design registration can last for up to 25 years - time enough to become distinctive if the design remains in use, and a trade mark registration could then be obtained if continued protection is desired.

Additionally, an unregistered design right effective over the whole EU has recently been introduced. This right automatically provides three years' protection against copying of designs from the date they are first made public. A system providing a single design registration covering the whole EU is also expected to start operation in 2003.

Innovative design of products and packaging can appeal to all the senses and ensure it is your product that leaves the shelves. Taking advantage of the changes to design protection across Europe can help maintain and maximise that competitive advantage.

©2002. Boult Wade Tennant

This article appeared in the June 2002 issue of Kennedy's Confection.

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