Registered designs in the EU and UK – getting into the thick(et) of it
When it comes to protecting the appearance of a given product in either the EU or the UK, the registered design regime can be one of the most potent tools for dealing with competitors looking to imitate the appearance of the product. Indeed, unlike other forms of ”visual” IP protection, such as copyright or unregistered design rights, there is no need to show any form of “copying” to demonstrate infringement of a registered design right.
Often however, registered designs get an unfair reputation of being considered too narrow, and not effective at dealing with imitation or competitor products. Yet why is this? Well, EU and UK design registrations tend to operate much more effectively when they are pursued as a “thicket” of related design registrations – whereby multiple different design registrations are pursued to protect different facets of a given product. Tying in with this, one of the fantastic benefits of the EU and UK design registration regimes, and which is what makes these regimes so effective for use in creating such thickets, is that the regimes allow a given entity to pursue multiple designs in a single application at much more subsided rates, compared with pursuing just a single design registration in a given application. For instance, the official fees for respectively pursuing 1; 10; or 20 design registrations in the EU and the UK, as part of a single registered design application, start from as follows:
|Number of designs in single application
|Total cost EU (cost per EU design) (EUR)
|Total cost UK (cost Per UK Design) (£)
Thus, and particularly in the UK, the relative cost of pursuing multiple designs over just a single design, for a given product and as part of a single registered design application, can be significant.
So noting that pursuing multiple designs for a given product can be beneficial, what typically makes a “good” design registration family, or thicket, for a given product? Well, avoiding overlapping design registrations is often an important place to start. So in this respect, and taking for example the scenario of where the product being protected is a car, if all of the given design registrations from the thicket are directed to a particular same area of the car (for example, the front end of the car), a competitor seeking to avoid infringement of the entire design registration family can more easily do so by focussing any changes to their product in the area where these design registrations are focussed (so in this example, the front end of the car).
However, if instead the design registrations from the thicket are focussed at separately protecting different portions of the car, such as design registrations separately covering the front bonnet design; the front headlight design; the side profile design of the car; the rear boot design; any rear spoiler design; the rear taillight design; the dashboard design; and/or the steering wheel design, this inherently then makes the thicket that much more challenging for the competitor to design-around, since they need to then focus on changing the appearance of all these different portions of the car individually to avoid infringement of the entire design registration family.
In terms of how the drawings of a given design registration can be shown to disclaim certain parts of the drawings from protection, this is often achieved through using dotted lines to show, or adding a blue or purple semi-transparent wash to cover, the portions of the design drawings for which protection is not intended. Though appreciating that such visual disclaiming techniques can often increase the cost of pursuing the design registration thicket in the first instance (through needing to appoint a specialist draughtsperson to create such drawings), at least as far as the EU and the UK is concerned, a relatively simple and cost-effective technique to achieve an element of a thicket can be through not showing the detail of a given design from a particular side(s). For instance, in so far as a first design registration is pursued which shows a given product from each of its six orthographic views (front; back; left; right; top; and bottom views), if a second design is also included which only shows the product from its front end, and/or a third design then also included which only shows the product from its rear end, the presence of these additional second and third designs, using the same materials from the first design, can then immediately broaden the design registration protection in the EU and the UK without the need for incurring additional draughtsperson costs.
Related to the above considerations, when pursuing such a “thicket” of multiple design registrations in the EU and/or the UK, the use of shading and colour in design registrations can also be a very effective tool in diversifying the protection achieved as part of the thicket. As background, typically black-and-white line drawings are often used to depict a product in a design registration, since this format of drawings then better protects the shape of the product - irrespective of any colour scheme or surface patterns used on its surfaces. That being said, if a given product has a particularly distinctive colour scheme, or has a particularly striking colour demarcation between different areas of the product (for instance in the case of dishwasher/detergent capsules, or a highlighter pen), which a competitor may wish to emulate in some form (albeit potentially using a different shape), then protecting these facets of the product as part of additional designs in the thicket can often be worthwhile. Even if this supplemental protection is achieved through the inclusion of a single additional design registration which is shown in grey-scale, for better protecting different areas from the product which are relatively lighter/darker coloured to each other, this single added design registration may prove invaluable later on, alongside any other designs from the thicket which otherwise showing the product in black-and-white line drawings.
Tying in with any colours or surface shading used in a given product, surface decoration can often also be an important part of product’s appearance, and so can often be worth protecting as part of an added design registration to the thicket. Indeed, and one of the lesser known facets of EU design registration protection in particular, is that both the EU and the UK design registration systems (though not via the international Hague design registration route) allow a single registered design application to contain both designs protecting the 3D shape of a product, along with separate designs directed to any 2D surface decoration from the product. Therefore, and where a given product has particularly striking surface decoration, or a surface pattern on it, any such surface features can, and should, be considered for separate protection as part of the design registration “thicket”. In this way, a competitor seeking to avoid infringement of the design registration family must then sufficiently design around the 3D shape of the product, and separately design around the design registrations covering the 2D surface decoration.
So in the context of design registration protection in the EU and/or the UK, it is always worth considering whether pursuing multiple design registrations directed to a given product may provide that much more comprehensive and cost-effective protection, compared with just pursuing a single design registration protection for the product - which may be otherwise that much easier for a competitor to navigate around.
If in doubt, think thicket!