22 July 2016 11:00
Can a business protect its product shapes from competitors?
It is an often overlooked element of intellectual property, but it is becoming increasingly difficult for businesses to protect the shape of their products against copies from competitors.
Partner and Head of Corporate & Commercial at Coodes Solicitors Sonya
Bassett explains the different ways in which a business can protect the shape
of product designs.
Shape is an often overlooked element of a product’s distinct features
and it is important for a business to consider protecting the shape of a
design. This is a complicated area and
it is becoming increasingly difficult for UK businesses to adequately protect
shapes, so here are the options available:
Copyright can seem an attractive option, because there is no registration
and a long period of protection. However, copyright is of limited use for most
product shapes, and is generally restricted to works of art or sculpture.
Obtaining a patent means a business can not only protect the shape
itself, but also the process by which it is made. Unfortunately the application
costs are high and to achieve a patent you would need to prove that the shape
is novel and inventive, which can be hard to do.
Designs are the most obvious means of protecting product shapes and it is
relatively cheap, quick and easy to register a design. Unfortunately, registered designs are
difficult to enforce in the UK and there have been very few cases where UK
courts have found competitors to be infringing an existing design. A recent
high profile was when Trunki was unable to win a case against its competitor
KIddee Case, who created a similar children’s ride-on suitcase. Another risk is
that registering a design means putting a lot of information out in the public
domain, which can make it easier for someone to copy your design.
This is a free option requiring no registration, however it can only provide
protection for three years. Crucially, that protection is even more limited
than for a registered design.
It is difficult to obtain a trade mark because there are a number of
hurdles, including proving the shape’s distinctiveness, but in the right cases
this can provide a high level of protection. Even Lego was unable to secure a
trade mark for the shape of its bricks, although it was successful in getting a
trade mark for the shape of its Lego figures. The Toblerone and Walnut Whip enjoy
the protection of a shape mark in recognition of their distinct shapes,
compared to other chocolate products.
This is a complex arena and with such an array of options, all with
their potential pitfalls and advantages, the key is to look at each in detail
to work out which is likely to offer the best protection. We can help
businesses think through the practical implications and work out the best way
to protect their product.
For more information on this or any business enquiries
contact Sonya Bassett, Head of Corporate & Commercial at Coodes
Solicitors on or firstname.lastname@example.org