ACID's latest article from the IP Doctor, Niall Head-Rapson of McDaniel & Co., covers furniture design

In this latest ACID IP Doctor Niall Head-Rapson from McDaniel & Co. discusses furniture design and potential legal pitfalls.

I am an independent furniture designer but I do incorporate previous design features into my own original work, such as Chippendale style legs etc.  Does this affect the rights in my design?

The incorporation of common design features can in certain circumstances produce a new original design when taken as a whole. However, if someone were to copy the previous design features you had incorporated into your design in isolation then you could have no complaint. The originality and protection of your design would reside in the combination of features and therefore that combination would need to be appropriated for any claim to subsist.

However, it could be that another person copies your original parts without copying the old design features you had incorporated. In this situation it may be that you could rely on the originality of individual parts of your design that had been created by you.

In summary the incorporation of old features does not necessarily negatively affect your rights in your design but it could affect your ability to pursue others. Each case is always fact dependent and legal advice should be sought. The bottom line if in any doubt is to clarify your position with an IP specialist before marketing a new design which incorporates what could be described as the style of others.

My company produces reproduction furniture based on items from the 18th and 19th centuries.  Are we able to register any of the designs we produce?

When applying for a registered design, the hurdle is whether the design applied for is new and of individual character. By new, this means that no new identical design has been made available to the public before the date on which the design for which protection is claimed is applied for. The design will be considered identical if its features differ only in immaterial details.

Further, a design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date on which the design for which protection is claimed is applied for. Various factors, such as the degree of freedom of the designer, technical constraints and legislative requirements are taken into account.

Each case will depend on its own facts, but those are the basic requirements. If your company is producing copies of furniture from the 18th and 19th centuries without any substantial additions in appearance, then it is extremely unlikely they would be registrable as identical designs will have already been disclosed prior to the date you apply and those designs would give the same impression as the furniture you are producing.

Although there are typically no prior art checks undertaken by the relevant designs office, if the validity of the design was ever challenged, such as if you ever tried to enforce the registration against a third party, then the design would likely be invalidated for lack of novelty.

I have often seen furniture marketed as ‘in the style of’ for example, Charles Eames.  Is this permissible under UK Design Law?

Purely under a UK design law basis, the issue would concern the appearance of such furniture rather than its branding, therefore marketing such furniture in that manner would not offend against any design law.

However, any potential issues that may arise could be in respect of trade mark laws or passing off. If, for example, a famous name was registered in respect of furniture, then it would essentially depend in what manner you were using that name, i.e. you may not be using it in a trade mark sense (i.e. to distinguish your goods from a competitor), but purely to denote a characteristic of your goods, as in the example above, and hence not offend against the registration. However, each case will depend on its own facts, and whether for example that use is honest.

Furthermore, if the trade mark was a really well known mark, then it could be said you were taking unfair advantage of that mark even if you are using it to denote a characteristic.

If you are in any doubt about what is permissible, seeking legal advice is recommended.

My company has been producing a very successful range of bedroom furniture for some years.  Another company has recently approached me and said that now I have to allow them to produce it also.  Is this right?

Yes, potentially. If your furniture is the mass produced type, and you have not sought a formal design registration, then any protection is likely to be limited to the UK unregistered design right. The right lasts for 15 years from the end of the calendar year in which that design document or that article came into existence (whichever occurred first).

However, if articles made to the design are sold anywhere in the world within the first five years then the design right will expire 10 years from the end of the calendar year in which the articles were first made available for sale or hire.

In the last 5 years of the right, any person is entitled as of right to a licence to produce your designs. If you cannot agree terms then this can be resolved by the Design Comptroller.

However, the matter may not be so simple. If your furniture for example is handmade, then it may be protected by copyright, to which no licence of right applies. In addition, any surface patterns, such as engravings, or prints on the furniture could also be copyright. In those circumstances, again, those parts of the furniture would not be subject to the licence of right.

In this situation, it would be advisable to seek legal advice as soon as possible.

I have produced a chair design which I think is suitable for mass production.  What sort of documentation should I have in place before I contact manufacturers in the Far East for production quotes?

Most people acknowledge that copying in the Far East is problematic. Furthermore, as those copyists are so far away, it can often be difficult to take action. On the other hand, this needs to be balanced with the fact that savings in production costs can be made by shifting production to those countries.

The first steps could be to contact any acquaintances who also use companies in the Far East as they may be able to recommend a trustworthy contact.   However, when it comes to sending prototypes for quotes, there are measures you can put in place to offer at least some protection. The ACID Intellectual Property Agreement could be useful. This is a short agreement that you would give to the manufacturer and ask them to sign before sending them any prototype, or sample of your designs. Signed agreements provide clarity of ownership should you ever need to rely on them in any dispute.

The agreement outlines that you are the owner of the samples and any intellectual property rights. The manufacturer, by signing the agreement would acknowledge that and also agree not to do anything with the samples without your written consent. It would also subject the manufactures to English law and jurisdiction meaning it is simpler and less costly to take action.

Of course, this does not offer any guarantee that things will not go wrong but it simplifies matters as opposed to having no written agreement in place.

This article was first published 1.9.10