Author: Daiva Bukniene, METIDA Trademark and Design Consultant, Foreign affairs coordinator
The recent design week that took place in Milan on April 12–17th has caused quite a ripple. At the event covering a span of several days, designers and design companies from all over the world introduced original accessories, furniture, lighting fixtures, and other products of interior decoration. Discussions over the new design trends will continue for quite some time yet, and the line-up at the show featured a few Lithuanian manufacturers as well, some of them, such as the furniture design studio Egli UAB (http://eglidesign.lt/), received special attention.
Many admire design as a work of art; however, one should remember that attractive design first of all draws the attention not only of those who appreciate art and creative work, but also those who seek to unfairly profit from it and thus have forgery on their mind, as well. We are dealing with forgeries on the market all the time. Using famous brands to label forged items is most likely the common practice. Nonetheless However, there are plenty designer items that are being replicated in an illegal way. Online shops are full of imitations of famous designer items that being sold way cheaper than original price go at a fraction of the original’s price.
For instance, SKYGARDEN, a pendant illuminator t by one of the most famous and inspiring most influential global designers – Marcel Wanders (http://www.flos.com/consumer/en/products/pendant/Skygarden) is extremely popular with forgers who are offering similar or identical replicas.
The charming LEE BROOM pendant illuminators (http://www.leebroom.com/products/square-decanterlight/) are also no longer unique. If you search the Internet for LEE BROOM, you will find quite a few images of copies of the original design.
It is no longer surprising that copies of the ARTICHOKE pendant illuminator designed by Poul Henningsen in 1958 (http://www.ylighting.com/louis-poulsen-ph-artichoke-pendant-light.html) are being sold even in shopping malls, for cheaper than original price.
Similar or even identical replicas of the famous EGG armchair that Arne Jacobsen designed for the Radisson Hotel in Copenhagen back in 1958 (http://www.fritzhansen.com/en/egg-easy-chair-3316) can be found both in online shops, and furniture stores or marketplaces.
What are the possible ways means of protection and how do they work?
Methods to protect designer items against counterfeiting include copyright,, trademark and design registration.
Copyright is vested in every author whose work is a product of intellectual labour. Copyright applies while the authors are alive and 70 years after their death. Due to its long effective period, no copyright registration is necessary. Copyright protects design against replication, yet proving one’s rights to a piece of work is a difficult process on account of no registration; hence, disputes over authorship can be quite complicated in nature.
In order to be registered, a design has to be new and possess unique qualities. If a design is new and carries exclusive properties, it can be filed for registration. The registration is relatively cheap and one application can cover a lot of samples. Registration should be sought for a product designed by the author; however, once registered, the design does not need to be used – rather, registration prohibits its use by others. When it comes to matching designs or assessing potential design violations, even minor differences can be deemed to be essential. The maximum effective period of a design registration is 25 years (with renewals once in every 5 years).
A design can be protected as a dimensional trademark as well. Here, the main advantages are that the registration can be renewed as necessary (the renewal fee is payable once in 10 years), and comparison of similar brands considers whether the consumer will be able to separate different brands because of their differences. The weaknesses, on the other hand, are that the specific classes of goods or services to which the three-dimensional trademark will apply have to be identified; also, a design as a three-dimensional trademark cannot be registered for the goods that it denotes, such as a lamp for lamps, and so on. As an exception, when a mark has acquired a distinctive character through its use, it can be registered for the good it denotes, as well. Another important aspect is that we can register trademark for multiple classes, but its use with registered goods is important, because it can be revoked if, within a period of five years following registration, the proprietor has not put that trade mark to genuine use in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years. If a design has been in use for a period of 12 months or more but it may not be registered as a design (because of failing to satisfy the novelty requirement), you can always register it as a trademark.
Creations charms, inspires and leads us forward, but it is a shame when we come across their forgeries, and even worse – when we can’t protect them properly because not all aspects of protection have been taken into account. Therefore, once an idea is realized or a new piece of work created, it is always important to seek professional legal advice in order to obtain optimal protection for your work.