Practical Tips on Design Searching
Effectively searching for prior designs is a mammoth task. Today’s panel on design searching will ask: how can you do it effectively and how can digital tools help? James Nurton reports.
Design experts will share practical tips on overcoming challenges and managing risks in today’s session on Product Design Clearance and Search Strategies in the IP and Innovation (Wednesday, May 22, 9:00 am—10:00 am).
“Design searches are less common than trademark searches,” says Yoon Cho (Y.P. Lee, Mock & Partners, South Korea), who is moderating the panel. “It can be very hard to define the scope of the search depending on the nature of the product and the jurisdiction.”
While trademark searches can be targeted using databases of registered marks, design searches need to encompass any disclosed design. Designers need to consider registered IP rights, existing products, and designs published in catalogues or trade fairs to be confident that they can launch new products and/or file applications for registered designs.
Failing to do so can result in registered designs being invalidated and risk costly litigation that can delay product launches and jeopardize investment. “I’ve seen it many times - you get cease and desist letters and then infringement suits,” says Ms. Cho.
“Design searches are less common than trademark searches.”
- Yoon Cho | Y.P. Lee, Mock & Partners (South Korea)
During today’s session, the panel will explore how to do effective design searches and discuss how digital tools can help. Using technologies including artificial intelligence (AI), these tools are becoming ever more sophisticated in identifying and matching designs.
For example, World Intellectual Property Organization’s (WIPO) Global Design Database comprises over 15 million designs including Hague registrations and information from participating offices, and can be searched and filtered by various criteria, while DesignView provides access to the European Union Intellectual Property Office (EUIPO) database of registered designs and databases of other national and intergovernmental registries—a total of nearly 22 million designs.
As of May 6 this year, all European Union offices as well as EUIPO have been integrated into DesignView Image Search, meaning that users can upload images of their designs and the tool will automatically compare them with existing records.
One of today’s panelists, Susanna Heurung (Maiwald IP, Germany), says that clients in some sectors resist doing design searches because they take time and money, and do not always deliver reliable results, but this is risky. “In the EU, the case law has established that it is not important what a product is so much as what it looks like. Sub-classes aren’t really relevant anymore,” she says.
“Having good relationships internally and being close to the physical product is important to help us decide what to protect and to search.”
- Jacquelyn Knapp | ASICS America Corporation (USA)
One industry that pays a lot of attention to designs, and design searching, is fashion. Jacquelyn Knapp (ASICS America Corporation, USA), has worked at ASICS for about three years, having previously advised clients in various sectors on design protection while in private practice.
She emphasizes the importance of being “thoughtful and thorough” when it comes to design searching: “We work closely with our product development team on new designs that are coming up. It really helps to have a level of institutional knowledge so you can stay apprised of new developments and products in the fashion space.”
But Ms. Knapp admits this can be “a heavy lift” requiring understanding of competitors and market trends. For example, she monitors litigation dockets to see which design rights are being asserted and by whom.
“Having good relationships internally and being close to the physical product is also important to help us decide what to protect and to search. Everyone has to focus resources where we will get the most bang per buck,” she says
“Without a good search, you’re flying blind. If you’re not searching, you really have no idea what’s going on.” - Susanna Heurung | Maiwald IP (Germany)
In the consumer products area, this means asking questions such as: is the new design distinct and different? Does it have novel features? Will it be relevant for multiple years? And will it be used across different models? Other industries might have different priorities.
The panel will discuss new and emerging tools from both IP offices and commercial providers that promise to make design searching easier. Marie Farges (Questel, France) will explore some of these during the session. Ms. Knapp believes that new technologies will gradually make the task easier. “We are already getting faster results using digital tools and in time they will be better results too,” she says.
That will be welcome, as the volume of design filings and pace of development is only set to increase. Indeed, Ms. Heurung notes that planned changes to design protection in the EU will make it easier to file multiple applications, making searching even trickier. “Without a good search, you’re flying blind,” she says. “If you’re not searching, you really have no idea what’s going on.”
However, Ms. Cho adds that however much technology improves, designers will still have to be proactive and creative: “While AI might play a role in the future, strategically defining the search scope and equipping yourself with the necessary institutional skills will remain paramount for getting the most of any tool, including AI.”
