Legal Talk with Andrew Clay: Can you afford not to register your pack designs?

The answer of course is the intellectual property rights (IPRs) in the pack design. IPRs, though, come in a number of varieties and you need to know a little bit about each of them to best protect your pack.

The unregistered option
Some IPRs are unregistered and come into existence the moment the design is recorded in a permanent form, such as in a CAD system, on a piece of paper or as a 3D prototype pack. Unregistered rights, which protect packaging, are copyright which protects the more or less flat 2D surface features of a pack and unregistered design rights.

Unregistered design rights come in two different types: UK and European. Whereas UK unregistered design rights can protect the 3D shape and configuration of your packaging, European community unregistered designs can protect both the 2D and the 3D appearance of your packaging resulting from its lines, contours, colours, shape, texture, materials or ornamentation.

Registered designs, as the name suggests, require registration before they become effective and again they can exist both as UK and Europe wide rights. Both rights protect exactly the same things as European community unregistered designs – the 2D and 3D appearance of your packaging.

So what should a packaging designer best do to protect his new pack? There is one very simple rule: register all your key designs.

Registration is incredibly cheap – £40 for a UK registered design and €350 for a registration, covering the whole of Europe. They are also very quick to obtain: from a week or so in the UK to a few months in Europe.

Many advantages
Registration offers many advantages. Such rights last for up 25 years – way more than the 3 years you get for a community unregistered design or the 10 calendar years you get for UK unregistered design rights (during the last 5 of which anyone can require a licence from you).

Registered designs can also be much cheaper to enforce than unregistered rights as you do not need to prove that the infringer copied your design or indeed was even aware of it.

Thirdly, marking your designs as registered (a criminal offence if untrue) can not only warn off infringers but is also a good form of advertising: registered rights seem more tangible and are more likely to be taking seriously by your competitors.

Finally, casually dropping into the conversation with your larger customers that you have a registered design can be a great way of subtly signalling to them that you have such rights and that putting out to competitive tender a contract to supply packaging made to your designs is not necessarily an option open to them.

Andrew Clay is a specialist intellectual property partner with Hammonds LLP in Birmingham. Contract Andrew at andrew.clay@hammonds.com.

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