Goodwood Lounge Chair by Morgan

The UK furniture sector is made up of a myriad of talented, creative and design-led manufacturers whose brands represent the best in the garden, contract, hospitality, office, kitchen, bed and domestic sectors to name but a few. Brands such as Gaze Burvill, Morgan, Knightsbridge, Herman Miller, Chislehurst, Harrison Spinks and Halo spring to mind as exemplars of excellence and innovation. Recognition as brand leaders comes at the price of massive investment in design, skills, research, development and sustainability and inevitably the journey from concept to marketplace can cost tens of thousands which has to be recouped through sales. Building British design brands that the end user can trust for reliability, functional and safety qualities can take decades.

Imitation, copying and passing off by those who take the fast track through design or trade mark infringement is nothing less than blatant theft and poses a real threat to the brand leaders. Design law is complex and taking legal action is cost and time prohibitive and the consequences of design theft poses a serious threat to jobs and job security.

So what can be done?

• Rule Number One – Create a proactive IP strategy rather than reactive. Identify and understand the IP you own. If you don’t know what do to protect your work you will be ill-equipped if things go wrong!
• IP isn’t rocket-science – Become IP savvy take the simple ACID test and incorporate a positive message about your IP ownership into your terms & conditions of business. Basically, “Hands off we have a proactive IP strategy!”
• Know your design right from your copyright, your trade marks from your patents and understand some of the myths surrounding IP. For example, it is wrong to think that someone can change a design by a certain percentage and it becomes a new design.
• Look at the territories in which you trade – ensure you have the right protection and support. For example, if you are trading in China have you registered your design rights? Chinese registrations (design patents) differ from UK in that there is a threshold of global novelty. The UKIPO have appointed IP Attachés in China, South East Asia, Brazil and India and they are a great hands-on resource for useful help and support.
• Think about what makes your company unique and guard your trade secrets as it they were Crown jewels – create confidentiality agreements for sensitive information. Clarity of IP ownership is critical, particularly if there is an issue. It costs a lot more to disentangle things if there is a dispute if ownership is clear.
• Lock up your IP and unlock growth using ACID’s own, new Copyright & Design Databank which holds copies of over 300,000 designs, so If you have an idea keep it safe, for example a UK or EU registered design is a monopoly right and lasts for 25 years (EU stays the same at the moment and won’t realistically change for at least 2 years. ACID has consolidated the deterrent effect of the ACID Copyright & Design Databank in partnership with PIPCU, the Police Intellectual Property Crime Unit. We now have a downloadable certificate to prove your IP lodgement, which adds to protection and deterrence.
• Manage Your Risks! Obvious, but keep looking at the competition, identify who the copyists are and keep an eye out offline and online on major platforms. Having a brand protection and enforcement policy for knock offs discovered online is essential. Use ACID’s Spot the Difference initiative to identify copyists and display them against your originals. ACID will manage this for you. This is a small sector and naming & shaming in a controlled way can be devastating for copyists. But caution is required as making groundless threats and defamation so let us do it for you!
• Proof of IP ownership is essential Choose battles carefully – never sue on principle. Don’t forget, to publicise any settlements such as this will add to the deterrent factor of your brand. No-one likes their name associated with being a copycat so a good naming and shaming exercise can work wonders!
• If you don’t want to be copied – shout loudly. Include an IP statement on your website, marketing material product labelling etc., and it helps, if you are a member of ACID, to use the logo on your website. Some ACID members have a complete devoted to IP page and the message can be translated into 15 different languages.

What are some of the IP myths and queries?

What is the test of a copy design? Many believe that all designs have to be unique and a small change can create a new design. This is a myth. The test for design infringement is that the alleged copy creates a different overall impression on the informed user. A design must have distinctive character and not be copied from another design. Rarely do design cases ever reach the High Court but there is better access through the Intellectual Property Court (IPEC) which aims to deal with cases in two days. Even better is the Small Claims Track which deals with unregistered design cases of less than £10000. It is accessible and within reach of most, financially. However, in many cases a strong letter before action can achieve a good result.

Trading Standards, can I involve them? TS are a great resource but their intervention on IP issues and “Passing Off” is limited not only from a resource aspect but to those IP infringements with criminal provisions – registered trade marks and registered designs. The majority of UK designers rely on unregistered trade marks and design rights so access to Trading Standards intervention for copying or passing off is, sadly, limited.

How can I see if a design is registered or not? A simple search is available through the UK Intellectual Property Office and the European Intellectual Property Office https://www.gov.uk/search-registered-design and https://euipo.europa.eu/ohimportal/en/rcd-search-availability

If I rely on unregistered designs where can I lodge them to provide dated, unique and tamper proof evidence? Yes, ACID has an IP Databank which receives approximately 25,000 copies of designs per year. ACID members look on this as a valuable audit trail to rely on if their designs are copied. Currently this is not searchable at the request of members

If I discover a copy of my product at an event or exhibition what can I do? ACID has an Accredited Exhibition Organiser scheme which is a service offered by an ACID Accredited organiser to demonstrate a zero tolerance of design infringement. If a copy design is discovered at  show or event, ACID works on site with an IP lawyer and offers a Mediation Protocol. To date there have been over 4000 mediations. Any event or exhibition organiser can join the scheme.   There has been a 97% success rate.

What can sector trade organisations do to help their members? Join our Design & IP campaigning group to press for the immediate campaigning issues at hand. To date 11 other design trade membership organisations have expressed an interest in engagement:

• To press for criminal provisions for unregistered design infringement to become a crime (In 2014, as a result of an ACID campaign, the infringement of a registered design is now a crime). Individual directors can also be prosecuted. This would add the missing layer to UK design protection. A priority for the sector.
• Brexit proof design protection – register your designs and trademarks in the EU while you can. Currently although the Government has ensured that EU laws will be mirrored in the UK. We firmly believe that this is potentially the biggest threat to those designers relying on unregistered design rights as there is no guarantee that if a design is first published in the UK it will remain protected by EU design right in 27 other members states. We are campaigning vociferously.

LASTLY – A CALL FOR THE SECTOR TO UNITE!

A UNITED VOICE IS A STRONG VOICE AND ACID IS YOUR VOICE AGAINST DESIGN THEFT

Be vocal. Join us and add your name to a list which will be published in an ongoing campaign – The ACID Corporate Social Responsibility Charter for Intellectual Property

Intellectual Property: (Your name) publicly declare that we adhere to the highest standards of ethics, compliance and respect for IP in our own trade secrets, designs, trade marks, patents and copyright ownership and we adopt the same principals of respect for the IP belonging to others.

[email protected]

As soon as we have a critical mass we will publish a list. A condition of signing will be that in any dispute amongst signatories, there will be an obligation to mediate rather than litigate to find a solution.