Canterbury of New Zealand won the contract to supply England Rugby with its kit from Nike in 2012. This contract covered the period of the 2015 Rugby World Cup which was being hosted in England. Canterbury of New Zealand agreed to design, develop and launch a limited edition rugby jersey for England Rugby ahead of the World Cup which would showcase its cutting edge product design to the world. The key feature of the jersey was the uniquely shaped and reinforced neck line.
For sports brands, one of the biggest IP challenges is how to combat counterfeit products and copycats. This was not a new issue for Canterbury of New Zealand, but one which it wanted to be in the best position to tackle pro-actively.
Based on the experiences of Canterbury of New Zealand during the Rugby World Cup in 2011 in dealing with counterfeit products, we devised an approach to seek registered design protection for its 2015 kit design in markets where its products are sold, manufactured and also where there have been high levels of counterfeiting previously.
This approach gave the business a number of advantages. Firstly and unlike unregistered IP rights such as copyright, registered designs appear on the registers in the countries where they are protected. This in itself can act as a deterrent to third parties who may be considering copying a product. Secondly, and perhaps more importantly for Canterbury of New Zealand, a registered design is recognised by online marketplaces such as eBay and Alibaba, where counterfeit products are frequently sold, as evidence of the ownership of the design. The registration of a design, therefore, gives the owner the ability to take action using the mechanisms put in place by online marketplaces for the protection of IP rights more easily than, say, if you were relying upon copyright only.
Armed with a portfolio of registered designs ahead of the 2015 Rugby World Cup, Canterbury of New Zealand was able to take action to prevent the sale of counterfeit products and copycat products on online marketplaces and via Customs Authorities and Trading Standards in the UK.