Three pitfalls when obtaining UK or EU design registration and tips to avoid them
With respect to both UK and EU design registration protection, one of their primary benefits is that they can provide fast and cost effective protection, particularly where multiple designs are pursued in a single UK or EU registered design application.
Particularly for those new, or unfamiliar, at pursuing this protection however, there are a number of potential pitfalls which can cause problems. Three of these are as outlined below, along with tips for avoiding them.
Pitfall 1: inconsistent design drawings
One of the biggest sources for objection in the context of obtaining UK or EU design registration protection is where two given views from a UK or EU design show a portion of the design inconsistently. This could be because one view shows a feature with a solid (claimed) line, whereas another view shows this same feature in a dashed (disclaimed) line. Or perhaps one view shows a line/feature (for example a screw head) which has been completely omitted from another view which should otherwise show this same feature.
In so far as any such inconsistencies arise as part of the preparation of the various views for a given design, it is much easier to correct these inconsistencies before submitting any registered design application, by reviewing the views carefully beforehand. This is particularly important in the context of obtaining EU design registration protection, noting the EU design registry (the EUIPO) can typically be very strict about not allowing amendments to the content of any views of an EU design after it had been submitted, and instead only allowing a view(s) from the EU design to be deleted such to make the remaining view(s) from the EU design consistent with each other.
Tip 1: submit consistent design views
Always double check the views of your design are consistent with each other before submitting them as part of a UK or EU design registration.
Pitfall 2: number of views of the design
In so far as UK and EU design registration protection is required, there is no obligation in these territories to show a given design from all of its top; bottom; front; rear; left; and right sides. As an example, to the extent that protection for the rear of a given design was not deemed of significant interest, one way to obtain broader design protection in the UK or EU would be to simply not include a rear view in the UK or EU design altogether.
However, proceeding with this approach can introduce difficulties if this protection is then additionally required in other territories around the world, which have more stringent requirements about showing a design from all of its sides. So in these instances, not having an initial UK or EU design which shows the detail of the rear side could then mean this design is not compatible for use in some of these other territories around the world, which might otherwise mandate this rear detail to be shown.
In these instances therefore, rather than simply not showing the rear view at all, it may be preferable to include the rear view, but show its detail in dashed (disclaimed) lines instead, as part of an initial UK or EU design which includes at least one perspective view, and six orthographic (top; bottom; front; rear; left and right) views.
In respect of needing at least one perspective view, sometimes to show all the details of a given design, it may be necessary to include more than one perspective view. An example might be where both the left and right sides of a given design have a claimed recess with a particular depth. If only a first perspective view is shown which shows the front; top; and left sides of the design, alongside the standard six orthographic views, whilst this first perspective view may help show the depth of the recess on the left side, the depth of the recess on the right side would not be able to be determined from either this first perspective view, or the right orthographic view alone. So in these instances, a second perspective view showing the rear; bottom; and right sides of the design may need to be additionally included, such to show the depth of this recess on the right side, and such to make the UK or EU design more compatible for use in other territories around the world later on, which might otherwise mandate for this additional detail from the design to be discernible and thus sufficiently disclosed.
An EU design registration pursued at the EUIPO can contain up to ten views (seven protected views, and up to three unprotected views). Similarly, a UK design registration pursued via the web-filing process at the UK design registry can contain up to twelve views. So in practice, both the EU and UK design registries are able to accommodate a design including up to four perspective views showing the given design from four different perspectives, and the standard six orthographic views, which can often be enough views to then sufficiently disclose all of the claimed features from the design in a way that avoids some of the issues noted above.
To help balance between obtaining broader design registration protection in the UK or EU, whilst still having at least one design which is compatible with some of the other, more stringent, design registries around the world later on, it is also possible to pursue multiple designs in any submitted UK or EU registered design application (noting multiple designs can be pursued in a single UK or EU registered design application quite cost effectively). For example, a first design from the application might be provided with all the requisite views such to make this first design compatible with some of the more stringent design registries around the world, when this first design is ultimately pursued in those territories later on. A second, broader, design might then be included in this same UK or EU registered design application, which is similar to the first design. However, the second design might then omit some of the views of the first design (for example, the bottom view) to yield broader protection for use in the UK or EU only, but not for use in some of the other more stringent design registries around the world where this protection would not otherwise be allowable.
Tip 2: register sufficient design views
If design registration protection will be of interest outside the UK or EU later on, do consider whether any first pursued UK or EU design registration will have enough views to make the design compatible with some of the more stringent requirements of some overseas design registries, who may require all the details of the design to be fully discernible. Add extra perspective views where required.
Pitfall 3: publication issues, disclosure and unregistered design rights
One of the biggest benefits of the UK and EU design registration systems is the potential speed of obtaining protection. Assuming there are no objections, it is not uncommon for a submitted UK or EU registered design application to be registered (and published) in less than two weeks. Indeed, at the speediest end of the spectrum, if the “fast-track” process is used at the EUIPO, for which no additional official fee is payable, the processing time for obtaining an EU design registration can be reduced to as little as two working days!
Whist being able to obtain a published UK or EU design registration this quickly can in many cases be beneficial, care has to be taken that this fast processing and publication time does not create issues in its own right.
One example of this would be where design registration protection is obtained prior to the public launch of the design elsewhere, for example, as part of a fashion show or a product launch. Here, it might be a problem to “out” the design on the UK or EU design register before this official public launch, by having the UK or EU design registration publish too quickly.
Publishing a design on either the UK or EU design register prematurely might also create issues with respect to the manifestation of unregistered design rights in the EU (called unregistered Community design rights), and some unregistered design rights in the UK (called supplementary UK unregistered design rights), whose existence depend on where a design is first publicly disclosed. As an example, if a design is first publicly disclosed on the UK design registry, this will rule out unregistered design rights in the EU.
Premature disclosure of a design on either the UK or EU design register can also introduce difficulties if the design is intended for replacement by an updated design later on. In these instances, if the initial design publishes before the updated design is finalised, this may prevent valid design registration protection for the updated design in territories around the world which do not operate a novelty grace period, or which otherwise operate a novelty grace period whose provisions do not cover disclosures made on “official” design registers such as the UK or EU design register.
So care must be taken as to where, and when, a design is first publicly disclosed, to make sure such publications do not create unwanted consequences.
To help with this, both the UK and EU design registries provide for the concept of deferred publication. This is where, in exchange for paying additional official fees, the design registry will not immediately publish the substantive content/views of a design upon registration. Instead, the owner of the design registration can then request such publication later on, when it may be more appropriate to let this publication occur (for example, at a time after the owner has first publicly disclosed the design elsewhere, such as part of a product launch).
Where deferred publication is used, in the case of a UK design registration, the request to then publish the design must be made within twelve months of the date when the UK design registration was applied for. For an EU registered design application, the maximum period of deferred publication is 30 months from its priority date.
Tip 3: consider deferred publication
Do consider how and when the contents of a UK or EU design registration should be allowed to publish, particularly if this publication will be the first time the design is publicly disclosed anywhere in the world. Where necessary, use deferred publication to better control when this publication will occur.
- EUIPO Fast track conditions: https://dycip.com/euipofasttrackconditions
- EUIPO unregistered Community design: https://dycip.com/euipounregisteredcommunitydesign
- Changes to unregistered designs, UK Government: https://dycip.com/changestounregistereddesigns