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Should you mark your products with patent and design numbers?


The UK Intellectual Property Office (UK IPO) has issued new business guidance on the marking of products protected by registered design rights. As of 1 October 2017, registered design owners in the UK can mark their products with links to an internet site, allowing the relevant data to be updated more accurately. But what about rights outside the UK? We look at the benefits and pitfalls of marking products with IP numbers.

Patent and design marking is complex issue,” explains Eric Siecker, Novagraaf’s managing director – patents in the UK. “Adhesive decal might be easier to maintain, but permanent marking, such as stamping or casting, is expensive to start and change. If a right expires, is abandoned or invalidated, then companies will no longer be able to mark their products with that patent or design number. Stopping the application of the marking during production can be difficult, and there will also likely be products already in the distribution chain that may need to be updated too.”

Eric explains that, if no correction takes place, the product owner may be open to claims of false marking, misrepresentation and/or unfair competition. In addition, patent and design rights tend to be active in a limited number of jurisdictions only. If a product is marked with language that indicates the product is covered by a patent right and that product is being used or sold worldwide, then that too could open the door to claims of false marking.

“The virtual marking system set out in the UK IPO’s guidance takes away many of those issues as the data is much easier to add, amend or delete; however, virtual marking is not yet universally accepted,” adds Eric. “That said, it is very likely this will improve and appears to be the way forward.”

Reasons for marking products
By far the most important reason for marking products with registered patent or design rights is to increase the likelihood of successfully claiming damages  for infringement, says Eric. This is because damages are not payable by a registered design infringer who is able to prove that at the date of the infringement they were not aware, and had no reasonable grounds for supposing, that the design was registered. If a product is marked with the IP right in question then the infringing party will not be able to deny knowledge of the existence of the IP right.

Accordingly, marking on the product will also play a role in deterring copy (it is clear that the product owner is serious about its IP rights) and, of course, there are also potential marketing benefits too.

Changes in the UK as of 1 October
From 1 October 2017, registered design owners who have marked their protected product with a relevant internet link will be able to benefit in the same way: “provided that the internet address is accessible free of charge and clearly associates the product with the number of the design”. A similar system has been in place for patents since 1 October 2014.

As the UK IPO explains in its guidance: “Removing the need to mark the registered design numbers directly on the product will reduce burdens and costs for businesses and individuals who own registered designs, and will make it easier for the public to access up-to-date registered design information in relation to a product.” 

Registered design owners will continue to have the option of marking their product with the relevant registered design numbers rather than an internet URL. They will also continue to have the option of not marking their products at all, and this will have the same consequences as now; i.e. it will reduce the likelihood of successfully claiming damages from an infringer. It is important to note too that the change does not apply to Registered Community Designs.

For more advice on marking products with registered IP rights, please speak to your Novagraaf attorney or contact us.