|As Co-Chair of INTA’s upcoming 2018 Designs Conference: The Power of Design, Sheila Henderson (Richemont International Limited, UK) wants INTA members to know that the time is now to expand their IP wheelhouse to include design rights. “The expertise that practitioners have had to date may not be sufficient as the design landscape becomes more complex,” says Ms. Henderson. As Chief IP Counsel at a luxury goods brand, Ms. Henderson says her company has had to adapt to a changing landscape in which traditional trademark or copyright protection for branded products is often no longer enough to stop increasingly sophisticated infringers. With developments like “Brexit” on the horizon, and emerging technologies such as 3D printing potentially becoming faster and more accessible, it is more important than ever to have a solid understanding of design rights as another tool with which to combat impending uncertainty.
Ms. Henderson and Susie Arnesen (Loje Arnesen & Meedom, Denmark) are co-chairs of INTA’s “2018 Designs Conference: The Power of Design,” which will take place from February 26‒27, 2018, in London, UK. Ms. Henderson spoke more with the INTA Bulletin about the topics speakers will address and why both in-house and external IP counsel must prioritize becoming knowledgeable about design rights.
Why did you agree to co-chair INTA’s upcoming Designs Conference, and why is this a particularly timely topic?
When INTA called me to discuss the conference, we just happened to be looking for some new external counsel to help us with designs at Richemont. There is a real awareness internally that the litigious environment is changing. Our difficult litigations no longer involve simply trademarks. When people want to make a sophisticated copy of a Cartier watch, they’re not naive enough to put the name “Cartier” on it. The nature of the rights we can use has changed quite dramatically. Designs, if filed properly, have been a very effective tool, both for litigation and in negotiations. We’ve managed to avoid some litigation by producing a registered design right, so it has had the necessary effect of warding off people.
We’ve acknowledged in the last few years that people copying our designs are getting a lot more sophisticated. When you look at watch faces, for instance, and notice which parts of the design infringers are copying to get to the end product that looks confusingly similar to ours, it has become very sophisticated. Designs are the hidden gems that we have not used as fully as we should have over the years. As IP practitioners, we’re used to working with the marketing, advertising, digital, and social media departments, but when you put a foot in the world of designs, you have to talk to the design teams and the engineers and understand their vocabulary. Understanding the vocabulary, and especially the prior art, is a steep learning curve for most trademark practitioners.
Sheila Henderson began her career in construction law, but when she was introduced to trademarks upon joining Unilever, she “absolutely loved it from day one” and has been working with brands and IP ever since. Ms. Henderson moved from Unilever to Mars and then Reckitt Benckiser, before joining Richemont 11 years ago, where today she serves as Chief Intellectual Property Counsel.
What should in-house counsel be doing to better prepare for this new landscape?
There is a host of things we can do, and I think that’s why this conference is brilliant timing. Many IP practitioners know what a design is, but they don’t know the subtleties of the filing process, the ways to get protection in a cost-effective manner, the variations of drawings, the filing strategies—this is all to me part of the education aspect. We have to educate ourselves on issues of confidentiality, for example. How can we keep design applications confidential? How do we make sure that we get the best quality drawings at a cost-effective price? That’s the knowledge aspect, and then there’s the matter of getting to understand our products in a slightly different way. When you look at products from a design point of view, rather than a trademark point of view, it’s a slightly different vocabulary. It involves talking to a different audience within our own companies. And lastly, there’s watching the landscape and understanding that a lot of the more complex infringers are looking at designs to see what we filed in certain countries and coming up with workarounds. We’ve seen in a couple of litigations that, across a series of our watches, where we had design protection, we didn’t have the super-close copies, but where we didn’t have them filed, they came very close.
What should brand owners be doing to ensure the best protection for their designs?
I think the most obvious answer is documentation and keeping paper trails. A lot of arguments come down to chronology and timing and being able to evidence that. As lawyers, we can’t tell the business what to design, or not to design, or where to get inspiration from, but I do think the housekeeping side of it is important. That’s perhaps where blockchain technology, for example, could be helpful, and that’s something we’re looking into in terms of being able to get a clear chronology of what was signed when by whom. The flip side of that is having good contracts in place, whether it’s internal employment agreements or external agreements with suppliers to make sure there’s clarity on who actually owns the design. In a lot of litigation, you come very quickly to the question of, “Who owns it?” The design filing strategy has to match our overall IP filing strategy to be consistent with our tax policy, and I think that’s where the business can help us.
How do developments like Brexit affect designs?
As a brand owner, what we want is maximum protection in the most efficient way. To be able to mirror the EU regime that we’ve become accustomed to would obviously be top of our list. I think the area where there’s uncertainty is on unregistered design rights. It’s quite easy to forget about unregistered design rights, but certainly for the fashion side of our business, it’s really significant, and how that will develop and be protected post-Brexit is a big question mark. Because of the rate of evolution in fashion, you cannot be filing designs for every piece that comes out, so unregistered rights are super critical. Beyond that, I think Brexit builds uncertainty into a world where we’re dealing with uncertainty anyway, so it’s just a layer we could do without.
What effects will emerging technologies such as 3D printing have on design protection?
From our own business point of view, we use 3D printing as part of the design and prototyping process. For us, it has many advantages in terms of speed and cost—the better that technology gets, the better our own design process will get. On the flip side, it’s another way that people can copy our products. It’s an area that has huge benefits, as well as potential risk. It will come back again to the area of intermediary liability, which we’re quite interested in, to understand what liability, if any, the platforms that are hosting the design files will have. Are they actively contributing to the production of counterfeit pieces? We’ll have to wait to have some test cases on that.
INTA has been very involved with design rights lately—from adopting model design law guidelines in November to hosting this conference. What do you think INTA’s activity indicates about the future of designs?
INTA is in the right place at the right time on this subject. It’s an area where a lot of us need to educate ourselves, so the more noise and awareness-building that INTA does is a huge help. This is an area where external counsel also needs to understand there’s going to be growing demand. The expertise that practitioners have had to date may not be sufficient as this area becomes more complex. There’s a certain psychology of patents that comes into designs, especially when looking at prior art, and people need to have a very informed eye. Coming back to watches, one watch face can look very much like another, so you could start to argue that nothing is novel if you are not informed about the nature of the business. INTA is a safe place for practitioners to question, throw ideas around, and try to learn from each other.
What sessions are you most looking forward to attending at the conference?
As the conference co-chair, I’m excited for all the sessions! Rather than particular sessions, what I’m looking forward to most is an honest exchange of experiences—that’s what we all want. It doesn’t matter what the session title is, it’s learning from each other and coming away with one or two new tactics to bring into our own business. The advantage of a conference like this, where there are speakers from several different jurisdictions and product areas, is obviously to learn from outside our own daily life. I’m really hoping it will be quite participatory and we’ll be able to have some real conversations on the subject.
What do you most hope registrants take away, from a practical perspective?
I would love it if they walk away with their own personal checklist. If they come away with their own mini-checklist of what’s going to work in their day-to-day life that makes them feel more confident and excited about this area, I’d be delighted.
For more information on the 2018 Designs Conference: The Power of Design, or to register, visit the conference homepage.
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