Totseat Limited

How to fight fake ‘copycat’ products with IP and SnapDragon

Totseat is the maker of an “award-winning, washable, squashable highchair” — a fabric seat for toddlers that fits safely on almost any dining chair. The product was the brainchild of Rachel Jones and first sold in 2005. Design and trade mark protection was sought for the product and brand.

Case Study

Case Type

Design infringement

Action

Seeking EU protection

Outcome

Registered design protection

Alison Cole

By Alison Cole

Senior Trade Mark Attorney

Issue:

From the outset, Totseat obtained protection for as much of its IP as possible and has been vigilant in protecting and enforcing its rights. Since taking on the portfolio, we’ve worked with Totseat to ensure that its evolving product line continues to benefit from protection.

The seat has been a highly successful product, generating more than £10m of retail sales worldwide. However, unfortunately, the product was a victim of its own success, with counterfeits created — much to the dismay of its creator. Faced with the potential safety implications of sub-standard products and the lack of an affordable way to tackle the infringements, Rachel founded SnapDragon — a brand-monitoring firm which finds and eliminates fake products on global online marketplaces.

As well as policing existing IP, Totseat was keen to strengthen its product protection, particularly in creating a new design. Registered design protection is a relatively inexpensive (but generally unexploited) way to protect the appearance of goods. It’s also very easy to get wrong — simply not submitting the correct drawings could result in you falsely believing that you have sufficient protection. Likewise, changes to products (which are inevitable to achieve success) can require new protection, however this will only be valid if the product is sufficiently different to what has gone before and protection isn’t considered to be artificially extending the duration of design protection.

Careful drafting of the design application can cover a variety of permutations and avoid such pitfalls. In light of this, and being conscious of changes to the interpretation of design law due to high-profile cases such as Trunki, we undertook a review of the existing and available protection for the new Totseat design.

Action:

We advised that the changes being made to the product warranted new registered design protection as they had sufficient individual character to create a different overall impression on informed users over designs that had previously been disclosed to the public. Working closely with Totseat, we weighed-up the options of EU versus UK protection and reached the conclusion that EU protection would be more appropriate given Totseat’s target market. In this scenario, drawings are crucial, as the EUIPO doesn’t permit explanations or written disclaimers — everything must be clear from the drawings themselves. We worked to obtain appropriate drawings with which to identify and apply for protection of the new parts.

Outcome:

The registrations have since been granted and Totseat now has more weapons in its arsenal with which to challenge counterfeiters and copycats, including adding the drawings and descriptions to its SnapDragon profile to keep an eye on the online marketplace. Rachel’s work really sets an example to other inventors of what needs to be in place to ensure that they profit fairly from their creative endeavours.

Rachel Jones says: “The Totseat’s IP portfolio has stood it in great stead over the last 15 or so years but when Alison [Cole] said the new design was different enough to merit a new Design Registration it seemed a sensible plan to do so. The Totseat’s original design registration has been worth its weight in gold, in terms of protecting the business against fakes and copies… hopefully we won’t need to use this one in anger, but just in case!”

Need help fighting fakes?

Get in touch with Alison Cole at ajc@udl.co.uk.

020 3904 3365

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