Registered designs in the UK/EU: focusing on just the shape? You might be missing out!
In the context of registered design protection in the UK and EU, quite rightly one of its primary uses is to better protect the shape of any new product which is planned to be released onto the market. However, noting the aesthetic appeal of any given product lies not just in its shape, but also its surface ornamentation, it is always worth considering whether any obtained design registration protection might also cover these surface ornamentation features as well.
In the above respect, it is to be noted that both the UK and EU design registration regimes expressly allow for both these types of designs, namely shape designs, and surface ornamentation designs, to be protected into a single registered design application.
As background, a given design registration is usually classified under a particular Locarno Classification (of which there are 32 different main categories to pick from), which is the bibliographic tool used to classify the subject matter of the design registration. As an example, a design covering a piece of clothing might typically be categorised under Locarno Classification 02, whereas a design registration directed to the shape of a watch might be classified under Locarno Classification 10. In contrast, where a design registration is directed to surface decoration/ornamentation, rather than the shape of a particular object, the design registration is usually classified under Locarno Classification 32.
Noting the above, whereas a single EU registered design application normally only allows multiple designs to be combined into a single application in so far as all of the designs are in the same Locarno Classification, it is to be noted that the EUIPO (which handles EU design registrations) exceptionally permits any given designs in a particular Locarno Classification to be accompanied by additional ‘ornamentation’ designs in Locarno Classification 32. The same is possible for UK design registrations, noting the UK design registration system is even more liberal than the EU design registration system in so far it does not require multiple designs in a given application to all be in the same Locarno Classification.
What the above means in practice is that a single UK or EU registered design application, containing multiple designs, can effectively protect completely different facets of the appearance of a given product. Specifically, there can be some designs from the registered design application which protect the shape of a given product, with other designs in the same application separately protecting surface ornamentation features of the product - irrespective of its shape.
In this way, by using a mixture of designs which separately protect the shape, and surface ornamentation, aspects of any given product, the scope of the afforded design registration protection can be made that much broader, compared with focusing exclusively on designs related to the shape of the product alone.
To explain this illustratively, the central bubble below shows an example beverage product. Under the UK and EU design registration systems, a single registered design application could be pursued to include some designs directed to the shape of the product (as per the designs from the right-hand bubbles), alongside additional surface ornamentation designs (as per the designs in the left-hand bubbles) which are not expressly limited to any given product shape.
It is to be noted that the ability to protect both shape designs and surface ornamentation designs in a single application is only possible in respect of design registrations pursued directly at the UKIPO (for UK design registrations) or the EUIPO (for EU design registrations). In contrast, it is not possible to achieve this same protection in a single application by way of an international Hague design registration application designating the UK or EU (which is applied for at WIPO in Geneva). This is because a Hague design application expressly requires all designs to be in the same Locarno Classification.
So for those considering design registration protection in the UK/EU, do consider whether a blend of shape designs and ornamentation designs may be preferable, rather than focussing expressly on shape designs. Indeed, particularly for surface ornamentation or patterns that might be contemplated for use across multiple products, obtaining design registrations in respect of such ornamentation could prove extremely lucrative.