Registered Designs – Take Down Online Infringers of Your Intellectual Property
Registered designs protect a product’s appearance, and while often overlooked as a method of enforcing IP rights, they provide global scope for the inexpensive takedown of online infringers.
Key Takeaways
A registered design is quick and inexpensive to obtain and enforce compared to other forms of intellectual property.
Most online e-commerce platforms have IP policies which allow the use of registered designs and trade marks to take down infringing products without going to court.
Listing registered IP rights with online platforms can mobilise their detection and reporting software to flag counterfeit goods before they hit the market.
What is a registered design?
A registered design is a form of intellectual property that protects the overall visual appearance of a product, including its ornamentation and shape. In principle, it lies between patent and copyright protection, and is a critical component of IP enforcement.
Registered designs are locally enforceable and should be obtained in any jurisdiction that could be a valuable market, manufacturer or distributor of similar goods to the protected product. Internationally, the World Intellectual Property Organization (WIPO) recognises a broad class of ‘industrial designs’ that protect the ‘ornamental or aesthetic aspect of an article’. Depending on the jurisdiction, these are given different titles, including ‘registered designs’ and ‘design patents’. Each jurisdiction has eligibility requirements and enforceability protocols in place, and it is important to seek the advice of an IP professional to ensure that your rights are enforceable.
What are the benefits of a registered design?
A registered design, compared to, for example, a patent, is relatively swift and cost-effective to obtain. Patents can take many years to be granted and gain an enforceable right, whereas registered designs can offer protection merely weeks or months after application. Further, the technical requirements for registration are significantly lower for registered designs, and will incur considerably lower legal, administrative and government fees to prosecute to acceptance.
After a registered design has been obtained, enforcing its rights against online infringers can be substantially cheaper and easier than administering patent rights. Online e-commerce platforms such as eBay, Alibaba, Amazon, Shopify, etc. are well-equipped and set up to enforce design rights, as they are of a straightforward visual nature and are well understood. Patents, however, are much more technical, and these platforms will often deny prosecuting patent claims without a court order. Court orders are difficult and expensive to obtain, and often will only apply to a single seller or infringer.
Further, a registered design has significant advantages over an unregistered design, which has limited scope and likely little to no enforceability. In the circumstance that litigation or obtaining a court order is the necessary procedure to enforce a design right, it is extremely beneficial that registration and/or certification has occurred.
Online takedowns
A common issue faced by business owners is the sale of counterfeit goods on e-commerce websites. Due to the accessibility and ease of use of online platforms, infringers can quickly pop up and acquire valuable market share, and as such it is paramount that your products have adequate protection.
Popular e-commerce platforms, including eBay, Alibaba, Amazon, Shopify, Temu, JD, Wish, and Etsy all have intellectual property policies and reporting processes. Unfortunately, the procedures for undertaking a takedown of potential infringers are not consistent across websites or jurisdictions, and often a diversified IP portfolio will be necessary. For example, eBay’s Verified Rights Owner (VeRO) policy provides a useful Notice of Claimed Infringement. eBay’s policy permits trade mark and copyright infringement claims with little limitation, but should you wish to enforce a patent or design right under their policy, their requirements are much tighter and harder to fulfil. Similarly, on Temu, a detailed reporting platform is available that provides enforcement avenues reflecting the laws of respective jurisdictions. However, as at today, we were unable to find an option to report an infringement occurring in China.
E-commerce platforms sometimes equate registered designs as patents, which aligns with US legislation. This can unnecessarily raise the bar for removal to that of a technically complex patent, to the height of obtaining a court order. Due to these inconsistencies, protecting a design internationally can be complicated, and professional guidance is beneficial to ensure enforcement is cost effective and straightforward. A combination of registered IP is often necessary, and a registered design is a core piece of the puzzle that is relatively inexpensive to obtain and enforce, if done correctly.
Online monitoring tools
Many e-commerce sites offer brand registration programs, where IP owners can apply to register their rights with the website service provider. A few examples of these include eBay’s VeRO program, Amazon’s brand registry, Alibaba’s IP Protection Platform and Wish’s Brand Partner Program. These systems provide IP owners with access to advanced monitoring software and tools used on the e-commerce providers’ websites. In some instances, they can also mechanise automatic checking software to report infringing products before they reach the market. Further, they also grant specific reporting entitlements to registered owners, allowing for swift takedowns of counterfeit products.
In summary
A registered design is a relatively inexpensive and simple to obtain piece of intellectual property that is a useful tool in taking down online infringers of protected goods. While avenues for enforcing unregistered design rights do exist, they are weaker, with lower prospects of success and a narrower scope of protection. Registered designs are excellent tools for enforcing rights internationally without the hassle, emotion, or expense of going to court.
The optimal configuration of IP rights for you will depend on your specific product and its markets, but the team at Foundry IP can help create a personalised infringement management strategy tailored to your product. Get in touch with our experienced team and let us help you to protect your IP rights by registering early, monitoring regularly and enforcing with confidence.
Photo: Senad Palic from www.unsplash.comWilliam Jameson and Lester Miller