Protecting a new protective cricket helmet: an IP case study
The world of cricket was shocked last year when Australian cricketer Phillip Hughes died after a “bouncer” delivery hit him on the back of his head during a match in Sydney, Australia.1
In an attempt to prevent a repeat of this tragic accident, British Company, Masuri Group Ltd (“Masuri”),2 has worked closely with international cricket bodies and invested over 240 hours in developing an improvement to their cricket helmet. The result is the “StemGuard”, a high strength clip-on piece that can be attached to the back of an existing Masuri Vision Series helmet (see pictures above).3
The StemGuard features a “honeycomb” of plastic and high-strength foam designed to reduce the impact of high-speed deliveries at the neck area. The design of the StemGuard has two key aspects: protection for the vulnerable area at the back of the head whilst retaining free manoeuvrability for the batsman.4
As with all new products and innovative technology, this interesting new development raises questions about how IP rights may be used to protect Masuri's investment.
Before revealing the new StemGuard branded helmet in February 2015, Masuri applied for a UK trade mark for the STEMGUARD mark. This application covers a range of goods in class 9 (including protective helmets, protective face shields for protective helmets), class 25 (including headgear) and class 28 (including protective padded articles for use in playing the game of cricket).5 This application is currently pending before the UKIPO6 who will determine if it fulfils the criteria for registration and provide a statutory period for others to challenge the application (e.g. those that have an earlier conflicting mark). The Masuri logo is already registered in the UK for sporting helmets in class 9.
If the mark proceeds to registration, Masuri will have the exclusive use of the STEMGUARD mark in the UK in relation to the goods and services for which it is registered. A UK trade mark is renewable every 10 years. One of the primary benefits of this would be that Masuri will then be able to stop others using and registering without authorisation any identical or similar mark for identical or similar goods in the UK. This would help them to stop the sale of counterfeit StemGuard helmets in the UK, which may not have been manufactured or tested to the same safety standards, a key aspect of this type of product.
Given the likely global sales of the StemGuard helmet, Masuri may wish to consider international trade mark protection. This could be achieved using a Community Trade Mark, which would cover all 28 countries of the EU in one registration. However, because cricket mad countries such as Australia, New Zealand and India are not in the EU, there is a possibility of obtaining cost-effective protection in these countries through an International Registration. Sri Lanka and South Africa are not, however, members of International Registration systems so individual trade mark applications in these countries would be necessary.
Masuri have also announced that they have a patent pending for the improved helmet, although details are not yet publicly available and are unlikely to be for some time yet.7 If the patent is a UK application, Masuri will need to establish that the invention involved in the StemGuard meet the usual requirements for patentability namely that it is: (i) new i.e. there has been no prior disclosure to the public of the same invention; (ii) inventive (i.e. not obvious to a person skilled in the art); (iii) capable of industrial application; and (iv) not in an excluded category.8
A patent is a 20-year exclusivity9 to exploit an invention in return for the disclosure of information about the invention, which can then be freely used by the public when the patent expires. The justification for a patent exclusivity is that it encourages innovation by rewarding inventors.
Some may question why a patent should stand in the way of someone incorporating Masuri’s invention into a product and thereby potentially saving lives. By analogy in the health sector, methods of treating the human/ animal body or practicing diagnosis on the human/animal body have long been excluded from patentability in the UK on the ground that the public benefits largely outweigh the need to reward any individual inventor. However, a better analogy is with pharmaceuticals. Even though a new drug may save countless lives, if new and inventive, the innovator will obtain the benefit of patent protection. Without such protection, the pharma industry would not be able to make a return on its substantial investment in research and development and there would be little incentive to develop new drugs.
Whilst Masuri’s improved helmet may save lives, and there may therefore be an interest from a public policy perspective that the invention be implemented in as many helmets as possible, it is highly unlikely that there would be sufficient justification to exclude the invention from patentability on public policy grounds. Provided they have made an invention, it is proper that Masuri be rewarded with a patent and a return on their investment and thus benefit sportsmen and women (who have improved products that enhance performance and minimise injury).
Masuri will no doubt also be considering whether the new improved product will qualify for design protection. At the time of writing there are no registered designs pending on the public record, but it is possible that Masuri has deferred publication, so the details are not yet on the public record.
In general, it is a relatively simple and inexpensive process to obtain UK registered design protection or Registered Community Design10 protection for the outward appearance of a product (or part of it). There is no substantive review or opposition procedure prior to grant but a valid design should: (i) be new; (ii) have individual character; and (iii) not be dictated exclusively by its technical function.11 In relation to this latter criteria, Masuri will perhaps need to prove that the appearance of the StemGuard honeycomb of foam and plastic is not solely dictated by the need to affix energy absorbing material to that part of the neck. Similarly, Masuri will need to prove that the StemGuard is not designed exclusively to allow the attachment to fit with the Masuri Vision helmet (the “must fit exception"). If Registered Design Protection is awarded, Masuri will then be able to prevent unauthorised third parties from making or putting on the market products that incorporate the StemGuard design or a design that does not create a different overall impression. UK or Community Registered Design Protection lasts for 25 years subject to the payment of 5 year renewal fees.
UK Unregistered Design Right12 might also cover the original 3-dimensional shape of a non-artistic helmet and this protection arises automatically upon the creation of the original design (i.e. one that is not commonplace in the design field at the time of its creation). Again, there will be no protection if the StemGuard design is dictated by the fit or match with the original helmet. An unregistered design would allow Masuri to prevent others from making articles that are the same or substantially the same as the design or dealing with such articles knowing that they are infringing. Generally, an element of copying is required but this can be inferred if the articles are similar. UK unregistered designs are automatically protected for 10 years after the design was first sold or 15 years after it was created, whichever is earliest.
It is unlikely that the SafeGuard helmets would be considered to be artistic works and therefore would not qualify for UK copyright protection because they are primarily utilitarian. (The UK Supreme Court has previously ruled this in relation to Stormtrooper helmets for the first Star Wars films13). However, aside from the helmet itself, there may be questions surrounding any logos used in relation to the helmets, which could constitute artistic works if they are deemed to be original and therefore gain UK copyright protection in themselves.
Masuri should also be considering whether its new technology can be applied in other sports e.g. ice hockey or polo where there is a risk of similar injuries to the back of the head. If so, there could well be opportunities for Masuri to license any IP rights described above to operators in these other fields.
Overall, it can only be a positive thing that a British company is taking a pioneering role in improving safety standards and reducing the risk of another cricket tragedy. We eagerly await further information on the IP protection afforded to this valuable piece of technology and hope that the IP system provides fair and justifiable protection for Masuri’s investment and innovation. That will maintain the incentive for further investment in safety equipment and the enjoyment of millions around the world in the game of cricket.
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- Tags: Australia | Copyright | Cricket | Intellectual Property | International Cricket Council (ICC) | Patent | Player Welfare | Trade Mark