Tip of the day: imitating designs

When I present courses, I like to stress that the different IP rights are quite independent, each designed to do its own job. The intellectual property field displays a lack of joined-up thinking not because of any lack of intellectual rigour but simply because the rights are not intended to interoperate.

They do, however, overlap to some extend, and there are also some provisions which display a little negative joined-up thinking, if you like: for example, the provisions in the Copyright, Designs and Patents Act that restrict copyright’s incursions into the designs field. The Trade Marks Act also ensures that many designs will not be eligible for dual protection as trade marks too.

There are also plenty of areas of overlap. All five ways to protect a design will often co-exist quite happily: there can be UK and EC registered designs, Community unregistered design right, UK unregistered design right and even a touch of copyright. But even if none of them applies – problably because they have all expired – the design might still be protected.

This is what happened in the recent Numatic v Qualtex [2010] EWHC 1237 case in the High Court. Qualtex had done their homework before they tried to make their own replica of the Henry vacuum cleaner: they ensured there was no remaining design protection. What there was, though, was a passing-off action, relying on the fact that the public recognised a tub-shaped vacuum cleaner with a shiny black ‘bowler hat’ type lid even if it didn’t say Henry on it and even without the face decals that decorate the original.

The get-up (hat the Americans would call ‘trade dress’) of a product, or of a business, can be protected by a passing-off action. There’s nothing new about it. It will cost a lot, but if your key market is threatened by an imitator that’s probably not going to be your first concern. As for what you can get away with, the old copyright maxim, ‘what is worth copying is worth protecting’ doesn’t apply – but if what you’ve produced is clearly an imitation it might well go to far. The question in a passing-off case is whether you are deceiving customers, and imitation – notl to intellectual property lawyers, the sincerest form of flattery – will often, perhaps nearly always, lead to deception.