Trade Marks and Designs: The Designers’ Perspective – Event Review

by Pedro Malaquias

Last Wednesday, 26 February 2014, the UCL Institute of Brand and Innovation Law hosted the well-attended seminar ‘Trade Marks and Designs: the Designers’ Perspective’. After a short welcoming speech by Professor Robin Jacob, the floor was delivered to The Honourable Mr Justice Birss, who presented the topic and the afternoon speakers: Matthew Cockerill, Chris Griffin, Alexander Carter-Silk, Simon Malynicz and Attilla Kurdash.

The first on the stand was Matthew Cockerill, Associate Design Director at Seymour Powell. Resorting to Dick Powell’s iconic definition, Cockerill started by identifying a designer as a ‘radar-scanner probing art, architecture, technology, fashion, pop, everything and subliminally translating that into design’[1]. Designers are in the ideas business and cannot simply ask people what they want as this would lead only to improvements to the existing products, not to new products (joking with this point, Cockerill noted that cars might have never existed, as faster horses were the obvious solution as a mean of transportation).

The speaker then described the process for designing new products and the importance of the realities surrounding a creator. Ideas and inspiration come also from the works of other people, frequently serving as a starting point for a successful product design. However, inspiration should not be confused with slavish copy; the differences are easily perceived by any designer. Cockerill finished his presentation by making a short reference to the problem (without a visible solution, as far as this blogger could understand) that a designer faces when an idea defines the future of a certain product category, mentioning, at this point, the approximation of mobile phone designs following the successful launch of iPhone by Apple.

The next speaker was Chris Griffin, managing director at pi global and CEO of the Museum of Brands, Packaging & Advertising. By recounting his company experience (with 35 years, 4269 projects, but only 5 incidents, all of them solved before reaching court proceedings), Griffin explained that designing is mostly done within the law. This is the case despite the fact that, from a short survey conducted by the speaker, in a 3 year design course students usually do not attend more than 4 yours (in total) of IP instruction. Griffin questioned whether this lack of instruction should be seen as a general opportunity or, instead, as a big problem.

The second speaker then explained that, in its relations with clients, a designer is requested to transfer global rights in everything that it produces (from concept sketches and prior art to the ideas as conceived). At the same time, the designer has to warrant that its work does not infringe any prior right, having to navigate in a world (the IP world) which is seen by designers as a complex maze.

Insisting on the fact that case law is just a marginal example of the designer’s practice (the top of the iceberg are the cases, but a lot more is beneath them), Griffin noted that the costs of IP (especially patents) can also exclude some (e.g. small enterprises, charities) from the protection granted by IP. At the same time, he referred to the importance of education and moral community rules, which might be a lot more effective than injunctions and damages. In a humorous final note, Griffin showed that even an informed public will have trouble in getting out of the IP maze. In asking whether a certain image constituted an infringement, the speaker received a divided show of hands by the audience.

Next in line was Alexander Carter-Silk, partner and head of Technology & Intellectual Property at Speechly Bircham and author of ‘The Development of Design Law Past and Future’ (you can find him in Twitter @leagleeagle). Focusing not on the law itself, but mostly on the history and value of design, the speaker explained that designs cause an emotional reaction with an object and, therefore, result in heuristic and cognitive biases. The separation between form and function was discussed, as was the question of what has more importance in defining the value of a product nowadays (function, quality or aesthetics).

Further questions were raised for the audience. Where does inspiration stop and plagiarism start? What is wrong and what is right? If design cannot be dissociated from a cognitive bias, how can a judge decide correctly? Provocatively using it as an example, it was questioned if the decision on Dyson v Vax[2] was the right one.

The law perspective was provided by Simon Malynicz, Barrister at Three New Square. Concentrating on trade mark law, the speaker started by questioning how Trade Mark law accommodates innovation and creativity and by quickly answering that it does not. On the one hand, the registration of descriptive trade marks can be obtained if evidence of acquired distinctive character is provided, which shows that the system cares only about what can work as a brand. On the other hand, and despite the quite broad definition resulting from article 2 of the Trade Marks Directive[3], the fact is that the registrability of non-conventional signs faces several difficulties, as the public is said not to be used to seeing such signs as conveying trade mark significance (Bongrain[4], Dyson[5] and Vibe[6] were provided as examples); evidence of the opposite is hardly possible, as surveys are faced with suspicion (as shown by the pending kit-kat case[7]).

Malynicz continued his presentation by sceptically saying that trade mark law might be seen as protecting innovation and creativity by denying protection. The accommodation of these values would result in trade mark law not allowing the registration of certain signs in order to leave them free for other competitors. Another possibility would be to say that trade mark law should not be used to protect what is to be protected by other rights. References to functionality followed (Lego[8], Philips v Remington[9], Nestlé v Unilever[10] and Julius Samann v Tetrosyl[11] were mentioned at this point).

The last speaker of the night was Attilla Kurdash, Owner of and Managing Director at Gina Shoes, which, according to the company website, remains ‘the last and only British designer label creating luxury footwear in London today’[12]. Kurdash made an emotional presentation about the company experience with IP problems, describing his judicial experience as a scary and consuming process. Differently from solicitors and barristers, Kurdash argued, the emotional connection between owners and their companies and products makes any case a “big deal”, costing too much time and resources, even if settlements can be reached before court proceedings are initiated. Kurdash finished his presentation by criticizing the current design law framework, which does not provide an appropriate framework for the real value of designs.

Birss J summed up the key points of the five presentations and opened the floor to questions. The first of the comments went back to the point raised by Griffin regarding the empty space of education for IP creators, arguing that such is a duty that the IP community must perform. However, the discussion quickly evolved to the need for IP lawyers and judges to be educated by designers. As mentioned by Cockerill, a designer knows what a copy is, but legal professionals face doubts in assessing such an issue. Could expert evidence solve this problem? A divided panel could not reach an agreement (costs and cognitive bias were raised against such possibility). The event finished following the design community’s appreciation of Dyson v Vax and a very brief explanation of the grounds for the decision by Professor Robin Jacob: it all goes back to the ‘informed user’.

 

Pedro Malaquias is a Portuguese Qualified lawyer. Currently, he is a LL.M. candidate at Queen Mary, University of London and works as a Student Research Fellow at Queen Mary Intellectual Property Research Institute (QMIPRI) and as Assistant Editor at Queen Mary Journal of Intellectual Property (QMJIP). @PedroMMalaquias


[1] Seymour Powell, R., Seymour Powell Publicity Brochure (London: n.d.).

[2] Dyson Limited v Vax Limited [2011] EWCA Civ 1206.

[3] Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks.

[4] Bongrain SA’s Trade Mark Application [2005] RPC 14.

[5] Dyson Ltd v Registrar of Trade Marks [2003] RPC 47.

[6] Vibe Technologies Ltd’s Application [2009] ETMR 12.

[7] Société Des Produits Nestlé SA v Cadbury UK Ltd [2014] EWHC 16 (Ch).

[8] Lego Juris A/S v OHIM, Mega Brands, Inc [2010] ETMR 63.

[9] Philips Electronics NV v Remington Consumer Products Limited [2003] RPC 2.

[10] Nestlé SA v Unilever Plc [2003] R.P.C. 35.

[11] Julius Samann Ltd & Others v Tetrosyl Limited [2006] FSR 42.

[12] http://www.gina.com/about-us.aspx accessed 28 February 2014.