Design protection as an incentive? Not to be taken lightly

An unusual initiative from the ever-innovative ACID caught my eye today. According to that organisation's press release,

"ACID (Anti Copying in Design) leads the way with the announcement of a National 2010 campaign to introduce intellectual property ... as another tier onto the criteria for judging design awards in the UK. First to take up the mantle is ACID trade association partner, The Lighting Association’s UK Student Lighting Design Awards 2010. The objective is to ensure that all entrants identify the IP they created, demonstrate what they have put in place to protect their IP and have an IP strategy and communications policy in place. An ACID representative will be appointed to the judging panel to assess the level of awareness. Awards organisers who include this ACID IP tier in their judging criteria will be able to display the ACID IP Accredited Awards logo on their website and marketing material. ...

ACID has carried out 1,000s of one-to-one IP Health Checks at their IP Clinics for over ten years at exhibitions; it makes sense to broaden this out to a National campaign to raise awareness about the importance of IP as a valuable asset through a National awards campaign. Through ACID Accredited Awards schemes, this may encourage more universities to include an IP module as part of the curriculum for courses representing the creative industries. The UKIPO have expanded ACID’s initiative positively with the launch of their own online IP health check, making IP awareness available to many more of the UK’s micro and SMEs.

Many award winners are unaware that in a recent Judgment [Procter & Gamble v Reckitt Benckiser 2007: noted here; full text here], Lord [Justice] Jacob created a welcome precedent for designers, particularly those who have protected their design via a registered Community design. It allows those designers who have won accolades, such as awards, to use this as evidence of commercial success, showing that their design is novel (and enforceable). Previously such evidence would have been largely ignored by the Court in deciding novelty, much to the understandable annoyance of the designer".

The idea of drawing design protection into the awards criteria is commendable: not only does it enhance the awareness of design protection on the part of contestants themselves, but it puts the relevant market sector on notice of the facts that (i) a particular design is protected and (ii) the protection is backed by a legal strategy. However, the evidential value of an award should not be overestimated. All that Jacob LJ said in Procter & Gamble v Reckitt Benckiser was this:

"7. ... Of more relevance (though even this is secondary) is the fact that the P&G design (in the form of its physical embodiment) received some independent accolade. The Judge records this at:

[10] The Febreze product was well-received within the packaging community. At the end of 2004 it won the New Jersey Packaging Executives Package of the Year Award. In 2005 it won the Ameristar Award within the category of household products. The citation for the latter award said:

"Febreze Air Effects is packaged in a uniquely shaped aerosol can that breaks category norms, stands out on the shelf, is easy to use and delivers a superb scent experience for consumers. Febreze redefines the difference a great product and a unique package can make in a customized container and actuator".

Having assessed this evidence, he found that the award-winning design was not infringed because it would produce a different overall effect on the informed consumer to what the trial judge felt was a poor imitation of that design. I suspect that the claimants in this litigation would rather not have won the design award if their failure to do so enabled them to succeed in the infringement proceedings.