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Patents and designs are essential in the face of counterfeiting
Watch companies file two types of protection: patents which relate to technical characteristics and designs which concern a model’s appearance. This strategy should be seen as a means of consolidating intellectual property.
HH Journal
CENTREDOC has been monitoring patents in the field of watchmaking for more than 30 years. The company, which is based in Neuchâtel, works with the majority of watch firms. Its director Bernard Chapuis goes over the importance of patents in the face of counterfeiting.
What role do patents play in the face of counterfeiting?
Bernard Chapuis, director of CENTREDOC: There are two types of protection. The first, design, relates to products’ appearance, such as the shape of the case or strap, or the form, colour or contours of the hour markers or dial. The second form of protection, the patent, concerns technical innovations which are often less in evidence. Filing patents and designs is, without doubt, an essential means of protecting intellectual property and, where necessary, asserting the holder’s rights in cases of counterfeiting. There’s a tendency to think that most patents are filed to protect a technical or technological innovation, but this isn’t always the case. Take the Swatch watch, for example. The patent for the integrated strap-and-case attachment via a metal pin covers a technical innovation but also contributes to the watch’s distinctive appearance.
Would you say that patents have become routine in the watch industry?
I can’t say if they’re routine as obviously we don’t know what companies are planning. However, the fact remains that a lot of them look to protect if not the technical aspects of their watches then at least the models, and this has led to a marked increase in the number of patents and designs filed.
The impression is that patents protect watchmakers against possible imitations by their competitors, but what about the mass-produced fakes coming out of Asia, for example?
Patents and designs are important in both these situations and are part of a strategy to consolidate intellectual property. When a company files a design or a patent, it lets others know that it intends exercising its rights, the aim being to dissuade those who may be tempted to copy. If, by chance, the company finds its product has been copied it has the official certificates proving that its product is the original. For this reason, patents and designs should be filed in all the geographic zones where the products will be manufactured and sold. The implication of this is the cost, as watchmakers generally do business in several markets.
In this case, what are the advantages of filing a patent in just Switzerland, say?
In cases such as this, the patent is seen more as a selling point that underscores the creativity or originality of a movement or watch. The company in question isn’t overly concerned about counterfeits.
Is cross-licensing a common practice in the watch sector?
I don’t know if it’s common practice but we have witnessed examples of this, between Swiss and Japanese companies for instance, when patents cover fundamental technical features. In this case, a well-stocked portfolio of patents becomes a decisive negotiating tool.
Despite the growing scourge of counterfeiting, it seems few cases end up in court. What’s the situation?
One thing is for sure: while every case may not go before the court, patent agents are kept busy. It’s a question of staying constantly alert, particularly during publication of an application as it is easier, at this stage in the process, to oppose the patent. For this reason, it’s not unusual for parties to enter into negotiations even before the patent has been granted, as once a patent has been granted it of course becomes very difficult to assert prior rights. Having said that, some cases do go as far as the courts, and this can carry quite a sting in terms of royalties or fines to pay, not to mention the obligation to withdraw the offending product from the market.
With so much to consider, patents must be eating up more and more time and energy?
The number of patents being filed by watch companies is growing considerably for the simple reason that this is a highly innovative branch right now, and one innovation will inspire another. More financial and human resources are being allocated to this activity compared with ten years ago. Also, even though it costs less to protect a design than to file a patent, the fact that companies now have more tendency to do so has led to a corresponding increase in budgets. The introduction four years ago of a European design protection system now facilitates design protection within the European Union. ■
