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It's better to design your IP than IP your design

"Kid, don't steal the hubcaps, steal the whole car." Frank Sinatra speaks this line in the 1964 Rat Pack movie, Robin and the seven hoods. He plays Robbo, a 1920s Chicago gangster.

He recalls a mentor and says, "When I was a kid, he caught me stealin' hubcaps off his car, and he said, 'Kid, don't steal the hubcaps, steal the whole car.' "

This was wise guy advice in Chicago in the 1920s. Today in Australia, for car makers and others with intellectual property (IP) assets, we believe hubcap thieves are the most common and dangerous pests. As IP strategists we'll share tips on how to lock them out.

robinsevenhoodsThis post is about IP strategy, in particular how to anticipate and hinder theft when designing a product or service and its IP protection.

In the execution of an IP strategy it is worthwhile to protect the whole of a product or service. This is also usually the more expensive option as it can involve filing several patent, design or trade mark applications.

Whether or not IP protection funds are limited, a lot of legal advice and protection can be bought by focusing on key parts of a product or service. This is usually the most economical approach. Skill and experience help identify those key parts.

An October 2008 court case between sneaker makers in Europe provides an illustration and many practical lessons.

The dispute in the Copenhagen Maritime and Commercial Court was between Puma AG Rudolf Dassler Sport and Netto A/S. It was a trade mark case concerned a strip on a shoe.

Puma AG is the owner of two Danish trade mark registrations for so-called "form strips" for shoes in class 25. Puma has extensively marketed shoes with form strips on their sides - see the accompanying photos of Puma shoes.

Major Danish retail chain, Netto A/S, sold shoes with a side decoration. In Puma's opinion, these shoes violated Puma's trade mark rights. Netto sold approximately 8,000 pairs.  puma_yellow

The Maritime and Commercial Court found there to be a risk of confusion between the shoes and ruled in Puma's favour.

Netto was ordered to pay Dkr200,000 (A$52,152) in damages for lost sales, disturbance of the market and fair compensation, plus an additional Dkr27,500 (A$7,173) in costs.

The case involved infringement of legal rights to a key part of Puma's shoe design, ie the strip on Puma shoes. Helping Puma to victory was its IP strategy which broadly followed some basic principles and practical lessons which we can draw from case.

First a couple of the basic principles:

  • People tend to take things that are of particular value, eg the jewels in a crown. In Puma's business, it is a strip on the side of its shoes.
  • People tend to take what is distinctive and not mundane. If you seek IP protection and money is limited, register what is attractive or distinctive. In the Puma case it was the "customer-facing" unique strip on its line of shoes.

Now a few practical guidance that helped Puma and can help others in product design. Similar guidance is followed by many successful branded product companies. puma-clyde-spring-2007

  • Make the design of the intellectual property (name, logo, image, graphic element etc) a key feature capable of registering in the minds of consumers. The Puma strip is a key feature of its shoes.
  • Design products with legal protection in mind. Build intellectual property into the design in such a fashion as to make it hard to remove the jewels from the crown. Many successful branded products builds IP into their design making the IP inseparable from the product.
  • Prepare designs that anticipate the behavior of competitors. It helps greatly if your design work is original. Seek legal protection and security for the original elements.
  • Few can afford to register every element in a trade mark, design registration or patent. Therefore, ask: "What is likely to be stolen or taken?" Protect it. If possible register what is like to be taken (hubcap or car?).

This guidance involves designing products and services with the strengths and limits of IP law in mind.

It's about incorporating monopoly or licensed IP into products and anticipating the behaviour of both car and hubcap thieves.

This is IP strategy at work. Study Nike, Addidas, and Louis Vuitton. Their IP becomes their design! Call if you want to discuss this more.

 


 

Credits: All images are credited to Puma, except the movie poster.

Anais Guerin is a French law graduate and currently a legal intern at Dilanchian.

Further reading on IP strategy:


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