BLING IT ON – defending and protecting your jewellery business

So you own a jewellery business and want to know which intellectual property rights might be relevant to you… there are several rights for you to consider, each of which I have discussed below.

Trade marks

A trade mark protects your brand’s identity. They’re great for a variety of reasons:

1. Going through the trade mark process will allow you to establish whether there are any other competing brands with an identical or similar name to you. Being aware of these from the outset will mean you lower the risk of receiving future claims of trade mark infringement, saving you from significant costs associated with both responding to/dealing with the claim, as well as rebranding;
2. Trade marks are a commercial asset to your business and will be looked at favourably by potential investors or buyers; and
3. Having a trade mark is a valuable defence mechanism. If your brand is copied by a competitor or counterfeiter, without a trade mark, you’ll have to rely on unregistered rights via a claim we call “passing off”. Unfortunately, this is a notoriously difficult claim to succeed on (requiring you to prove goodwill, misrepresentation and damage) and entails a very expensive fight.

Registered design rights

If you have designs that you feel are new and innovative then registering your designs will provide you with great protection. In the UK, registered design protection lasts for 25 years (subject to you renewing your application every 5 years).

Registered design protection in the UK protects the appearance of a whole or part of a product (including any surface decoration) providing you with an exclusive right to the design, and to take action to prevent third parties from using any design that creates the same overall impression on an informed user.

If you’re looking to enforce your rights against a third party, having your designs registered puts you in a much stronger position than relying on unregistered design rights, where, as you’ll see below, the test for infringement is more difficult to prove.

Unregistered design rights

In the UK your jewellery designs will automatically be protected by unregistered design rights. This area of law (along with most things) has become quite complicated since Brexit. The position under the Copyright, Designs and Patents Act (CDPA) offers designs which are new and have individual character protection over the shape and configuration of products (no surface decoration) for 15 years from the end of the year in which the design was first recorded or 10 years from when the designs were first sold.

Some EU equivalent rights provide more extensive protection (covering the period of the whole product and not just its shape/consideration) however, these rights in contrast only give you protection for 3 years.

To prove an infringement of an unregistered design right, you would have to prove that there has been copying and that an alleged infringer has produced articles exactly or substantially similar to your design.

Copyright

Copyright protection in the UK lasts for 70 years after the author’s death. Under the CDPA copyright protects a broad spectrum of original creative ‘works’ and one category of works it automatically protects is “artistic works”.

Examples of artistic work can be:

1. drawings; photographs; sculptures or collages; or
2. works of artistic craftsmanship.

Therefore, copyright may be present within a number of elements of your business, including the jewellery products themselves, the photos taken of your jewellery on your website and social media, and the design drawings.

It’s important to note that the default position under UK copyright law means that the creator of the works will be the copyright owner (one exception being when an employee creates works in the course of providing their services to an employer). This means that to the extent you are working with third parties e.g freelance designers, they will own the copyright within the works they create and it is, therefore, extremely important to have an agreement in place transferring ownership of the copyright from them to your business.

When thinking about the protection of your copyrighted assets, an infringement may occur when someone uses a whole or a substantial part of your work without your permission.

Next steps?

So, how should you protect your jewellery business and designs?

1. Trade mark your brand name and logo;
2. Register any unique designs; and
3. Have contracts in place to ensure IP ownership sits with you when working with individuals/companies on the creative aspects of your business.

At Briffa, we are a team of friendly IP/ commercial lawyers who are here to help with any assistance along the way!

For any questions please email info@briffa.com.

Written by Shamina Knights – Solicitor