IP-Fälle und Artikel

Please, sir, I want some more…UK design registration - what to do when 12 views is not enough

In the context of obtaining registered design protection in the UK, this is often achieved through the use of the UK’s web-filing system, which allows multiple UK designs to be pursued in a single filing, very cost effectively. In that respect, the official fees for a single UK design pursued by web-filing start at £50, with the official fees for pursuing up to ten designs in a single application by web-filing starting at just £70.

One of the technical limitations of the web-filing system, however, is that it is only possible to pursue up to 12 views as part of a given design in the application. In practice, this cap on the number of views is usually perfectly sufficient, in so far as any given UK design might typically only have one or two perspective views, along with six orthographic (top; bottom; front; back; left and right) views. Appreciably however, there may often be instances where submitting more than 12 views may be desirable. This might be the case, for instance, where the shape of design in question is quite complicated, such that it may be necessary to add additional perspective views, magnified views, or other views from different angles/viewpoints to help sufficiently show the detail of the design. Another instance where supplemental views may be beneficial, for example, is where the design relates to an animated sequence where showing the progression of the sequence is not practically possible using just 12 views.

In these instances, it is to be noted that there are other, less common, ways to pursue such design registration protection in the UK, which might be worth exploring instead.

The first option is to submit the design using the paper-based filing system, which can be sent electronically to the UK design registry by email. Indeed, with the paper-based filing system, there is no limitation on the number of views that can be submitted as part of a given UK design. Appreciably however, where the paper system is used, the official fees are more expensive, noting that the official fees for a paper UK registered design application containing one design start at £60, and start from an additional £40 for each extra design pursued in the same application.

The second option is to use the Hague design registration system, designating the UK, to the extent that this is possible - noting that to use the Hague design registration system designating the UK, the applicant (owner) of the application must be at least one of:

  1. a national of a contracting party of the Hague design registration system;
  2. domiciled in the territory of a contracting party;
  3. have a real and effective industrial or commercial establishment in the territory of a contracting party; and
  4. habitually reside in a contracting party.

With the Hague design registration system, there is again no practical limitation as to the number of views which can be submitted as part of a single design covering the UK. Though with the Hague design registration route, it is to be observed that the official fees which are payable are directly related to the number of views which are used, in so far as including more views equates to more official fees being payable to WIPO (which is the entity in Switzerland which handles such Hague design registrations). This is not the case for design registrations pursued in the UK via the UKIPO, where the official fees are based solely on the number of designs which are pursued, not on the number of views which are contained therein.

So particularly in those instances where a large number of views is practically needed for a given UK design registration, it is always worth exploring whether some of the above, more atypical, routes of design registration may be beneficial instead. Indeed, and particularly where the intention is to then use the UK design registration as a priority document for use in other design registries around the world, which may not have a limitation on the number of views which can be presented, being able to have these extra views included as part of the initial UK application may be highly desirable (and in some cases, essential)!

Design-Buch Europäischen Designrecht
Design-Buch Europäischen Designrecht
Design protection Are you protecting your designs?
Design protection Are you protecting your designs?