Design registration is a cheap, relatively easy way to achieve an up to 15 year monopoly right in a design of an article which is intended to have “eye appeal.”
Who: Girl Power Toys Ltd. and Spice Girls Ltd.
When: August 1999
Where: UK Designs Registry
What happened:
Design registration is a cheap, relatively easy way to achieve an up to 15 year monopoly right in a design of an article which is intended to have "eye appeal." Despite this, it is massively under used, and this case, in which the real Spice Girls applied to cancel a registration by Girl Power Toys of designs for Spice Girls figurines, underlines some of the reasons why.
For instance, a design registration will be cancelled if it can be shown that the design was "novel" and/or was made public before the papers were lodged with the Designs Registry. And "made public" can have an unexpectedly wide meaning. In this case, Girl Power Toys did not dispute that their sending of designs for the figurines to the Spice Girls’ merchandising agent, prior to applying to the Designs Registry for the registrations, amounted to publication, and on this count alone the registrations fell to be cancelled.
The Registrar also struck down the registrations because no proper consent had been obtained from the Spice Girls before the design registrations were applied for. But hang on, if sending the designs to the agent was publication rendering subsequent registrations invalid, how could consent have been obtained without losing the right to a registration? The answer lies in ensuring, if you are going to share a novel design with any third party before applying for a registration, that it is made quite clear, and recorded, ideally by means of a non disclosure agreement, that the design is shared in the strictest confidence.
Why this matters:
The recent Lady Diana and Elvis Presley trade mark registration cases have emphasised the vagaries of the law in the area of personality rights. This case shows that other means of protection may be available, but great care must be taken with the novelty and consent requirements if a registration, and a right to prevent others making closely similar articles, are going to be achieved.
