Intellectual Property in Tartan

The interactions of tartan registration with IP law

This article follows on from our article on the Scottish register of tartans. It is important to understand the scope of the protection conferred by a registration of your tartan at the Scottish Register of Tartans, and especially its limitations, so as to develop in response a comprehensive IP strategy, notably relying on copyright, trade mark and design laws.

Registered tartan: what rights do I have?

In short, tartan registration does not confer any intellectual property rights (IPRs). Registering a tartan only prevents other people from registering the same, or a very similar, tartan on the Scottish Register of Tartans. The Keeper will check every new application against the existing database.

Nevertheless, the registration on the Scottish Register does provide evidence of the existence and date of your design, which may be useful in the context of copyright and design law, for instance when challenging the originality or novelty of a competing pattern.

You may also provide in the Register entry of your tartan some usage-restriction preferences (e.g. exclusive use, authorised use only, etc…). For instance, the Fortnum & Mason’s tartan is “intended for the exclusive use of Fortnum and Mason” and “permission to weave this tartan must be sought from both Fortnum & Mason and Araminta Campbell".[1] However, The Scottish Register of Tartans Act does not provide for any enforcement action and you would likely need to rely on copyright law to prevent someone else’s from using it.

To act as a deterrent against third parties, you may also add in the Register entry for your tartan any official intellectual property rights associated with it that you own (even outside the UK), such as trade marks or designs.[1] You can do so as part of the application or by filling an amendment request if the rights are obtained at a later date.

Copyright protection

A tartan 2D design may be considered to be a work of artistic craftsmanship under UK copyright law.

Indeed, in the case Response Clothing Ltd v The Edinburgh Woollen Mill Ltd, the Court acknowledged that a fabric design may be the object of copyright law so long as its creation required skilful workmanship, and that it was made with creative ability producing aesthetic appeal.[2] These two conditions may be fulfilled by a tartan design.

Note that the creator of a design will be considered as the first owner of the intellectual property rights (IPRs) associated with a tartan. If the design was created in the course of employment, then the employer will be the owner. In the case of a commission, the ownership of the related IPRs should be clearly set out in a contract. This is true for copyrights as well as design law.

Design protection

To protect your tartan through IP law, you may also apply for design protection.[3] Registered design protection exists specifically to defend the visual appearance of a product and can apply to patterns, such as tartan patterns. The requirements are that the pattern should repeat itself and that the representations contained in the application should show at least one repeat of this pattern.

Assuming you register your tartan with the Scottish Register of Tartans first, bear in mind that the inclusion on the Register will likely constitute a disclosure of your design which would preclude the novelty of the design and therefore its validity. This means that you should ideally file a registered design application (possibly with a request for deferred publication) first, or at the same time as your application to the Scottish Register of Tartans. That being said, the UK and some other countries have a 1-year grace period following a first disclosure within which a registered design may be validly filed.

Trade mark protection

Trade mark law may play a role in various ways in the protection of your tartan.

First of all, you may wish to check whether you can indeed use the name you have in mind for your tartan. Indeed, as mentioned above, to be accepted by the Register a tartan name cannot be the same or similar to that of a registered tartan, nor can it be similar to a registered trade mark. Therefore, it is recommended that you search whether the name you want to use for your tartan is available both on the Scottish Tartan Register and on the UK trade mark register.

It is good to remember that the registration of your tartan in the Scottish register of Tartans will not automatically give you trade mark rights in the name. Especially if you wish to commercialise the tartan, you should consider applying for trade mark protection.

Another possibility offered by trade mark law is to apply for the protection of your tartan design as a figurative trade mark, which is for instance the case of the Burberrys’ famous tartan pattern.

Figure 2: The Burberry's tartan as a figurative trade mark (UK No.UK00901591601)

Conclusion

Intellectual property provides several ways to protect tartans. A registration on the Scottish Register of Tartans is useful but does not in itself provide substantial intellectual property rights and you should be careful not to file first on the Scottish Register of Tartans and prevent yourself from obtaining valid registered design protection. You will find that a combination of trade mark and design rights, for instance, will bring a much-needed certainty over the nature of your rights, and ultimately ensure you keep control over your creation. Careful planning of your IP strategy, especially when commercial prospects are expected, will help you avoid running into any obstacles later.