Familiarity of design is one of the priceless tenets in making any product a success. It can help breed customer loyalty and once companies have found that winning formula, there’s no need to change. But what are the IP implications for our more familiar brands and products?

Form, function, distinctiveness: the three bywords which can ‘make or break’ a product. Be it building the world’s best-selling car, or producing the packaging for a perfume worn by the world, it all starts in the studio and many successful companies have built their whole reputation on their design brand.

Indeed companies that place particular emphasis on continuity designs are regarded as trailblazers, flying in the face of needless developments and a constant tinkering of their product lines.

One example of this is Nokia, the mobile phone company. It has built its success and reputation on familiarity – all its models follow similar design principles and navigational techniques.

Founded in 1865 in Finland, in the 1960s, Nokia foresaw the growth and potential of the mobile telecommunications industry and in 1987 launched the Mobira Cityman, a mobile telephone that is now regarded as a design classic. At the time of the first mobile phone boom in 1992, the company decided to focus solely on its telecommunications business – perhaps the most important strategic decision in its history.

Lucy Nichols, global director of IP brand protection at Nokia, thinks that the concept of design equity and protection is often overlooked by other companies. ‘Trademarks are routinely associated with a company’s brand and rightly so – a product’s design is equally important in differentiating it from a competitor’s products. Design rights are particularly important to my daily work as Nokia’s distinctive product designs contribute substantially to building Nokia’s brand value,’ she explains.

Lucy joined Nokia in 2000, having worked in private law practice for 10 years with IP firms in Washington DC and New York. She is responsible for managing and protecting the IP Rights related to product designs as well as trademarks and anti-counterfeiting.

An obvious conundrum presents itself. If part of Nokia’s success is down to a familiarity of design, does that not open them up to some form of counterfeiting? ‘From an enforcement perspective, design rights are frequently used to thwart counterfeiters and manufacturers of “copycat” products who illegally use our protected design rights to mislead consumers or otherwise benefit from Nokia’s R&D investment,’ says Lucy.

Nokia places tremendous importance on its distinctive designs. ‘They are recognised as “unique” and gain customer loyalty. Any time a product becomes popular or sought after because of its design, it becomes a target to those who want to “free ride” on the tremendous investment behind the products,’ says Lucy.

In 2006, for example, Nokia sued two Chinese phone manufacturers and a number of distributors for copying its designs. However, damage was limited by Nokia’s foresightedness: it had pinpointed China as the next big area of economic growth and had wisely registered its IP in the territory to deter counterfeiters.

Electronics company Apple’s story follows similar lines to that of Nokia. Its success is also based on building an instantly recognizable suite of designs – across its iPod, iPhone and iMac ranges. Again, it follows similar patterns of navigation to create a stable of stylish and sought-after products. However, although this should make Apple’s designs easier to protect, this isn’t always the case. In 2005, Taiwanese company Luxpro Corp launched its iPod shuffle clone, the flash-based MP3 Super Shuffle player. After a two-year battle with Apple, the Shihlin District court claimed recently that both devices were ‘significantly dissimilar’ – much to Luxpro’s delight. Apple is currently fighting to get the decision overturned.

'Any time a product becomes popular or sought after because of its design, it becomes a target to those who want to “free ride” on the tremendous investment behind the products.’
- Lucy Nichols

Fighting the counterfeiters
The abuse of design rights is a worldwide issue, and it isn’t just restricted to pocket-sized hi-tech gadgets. In September 2007, the Frankfurt Motor Show was rocked by scandal. Chinese car manufacturer Shuanghuan was all set to unveil two of its newest models. However, BMW claimed that one of the models was far too similar to its new X5 sports utility vehicle to be a coincidence. DaimlerChrysler also took issue with another one of Shuanghuan’s new cars, claiming that the Noble car looked uncannily like its Smart Fortwo. The company is currently considering legal action.

The European Community is putting plans in place to assist holders of design rights in what is becoming a constant battle. In September it submitted its instrument of accession to the Geneva Act of the Hague Agreement concerning the industrial registration of industrial designs to WIPO. The accession will allow EU companies to obtain protection of a design not only throughout the EU but also in countries that are members of the Geneva Act.

Meanwhile, another solution to the worldwide counterfeiting problem has been put forward by Nike, one of the world’s largest sports goods manufacturers. In November 2007 it took an ‘open source approach’ to the problem by launching a bespoke online experience that allowed consumers to design their own footwear – no need to copy someone else’s design when you can make your own originals. It’s a personalisation service that had previously only been available to the likes of footballer David Beckham and basketball legend Michael Jordan, so is sure to score with the consumer in today’s celebrity-mad culture. Such is its success, in fact, that Nike is now opening ‘personalisation stores’ in capital cities across the world.

A necessary evil?
Even when companies have agreements in place, predictable problems still arise – usually because of mismanagement of contracts and confusion over rights issues. For example, McDonald’s restaurants are currently embroiled in a piracy row with iconic Danish furniture maker Fritz Hansen.

Since 2006, the company’s famous Arne Jacobsen-designed seating has been an integral part of McDonald’s European-wide refurbishment programme. However, it has discovered that McDonald’s had been using reproduction items in its UK restaurants. A McDonald’s spokesman said: ‘The reproduction similar chairs are widely and legitimately available in the UK, sourced from legitimate suppliers. We’ve made no attempt to pass them off as originals.’ ‘At a time when the US government, the EU, the World Trade Organisation and even China are trying to safeguard IP Rights, we simply cannot countenance co-operating with a group we see as accepting piracy,’  countered Fritz Hansen’s CEO, Jacob Holm. Such are the different views towards ‘copying’ that are held around the world.

Ultimately, however, as Nokia’s Lucy Nichols concludes, the sort of unwelcome attention that comes from a successful product is a necessary evil: ‘Every successful company that produces a successful product – as well as consumers themselves – falls victim to the crime of counterfeiting.’


This article first appeared in IP Review, issue 20

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