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What IP issues arise from redesigned cricket helmets?

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.In an attempt to 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.

In an attempt to prevent a repeat of this tragic accident, British Company, Masuri Group Ltd ("Masuri"), 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.

stemguard stemguard2

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.

As with all new products and innovative technology, this interesting new development raises questions about a number of IP rights.

Trade Marks

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). In addition, they applied for a series mark for STEMPAD and STEMPROTECTOR for the same goods. These applications are currently pending before the UKIPO who will determine if they fulfil the criteria for registration and provide a statutory period for others to challenge the application (e.g. those that have an earlier conflicting mark).

If the mark proceeds to registration, Masuri will have the exclusive use of the STEMGUARD mark in relation to the goods and services for which it is registered. 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. This would help them to stop the sale of counterfeit StemGuard helmets, which may not have been manufactured or tested to the same safety standards, a key aspect of this type of product.

Patents

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. In this respect, 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.

A patent is a 20 year exclusivity 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 practising 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).

Designs

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 Design 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. 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 which incorporate the StemGuard design or a design that does not create a different overall impression.

Unregistered Design Right 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.

Conclusion

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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