Introduction to Registered Designs
What is a registered design?
UK or Community registered designs can offer protection for up to 25 years (subject to renewal each five years).
You are allowed up to one year from the date your design was first made public before you have to register it.
Like other IP rights a registered design can be sold or licensed.
To be registrable, your design must be:
- New (not the same as any design which has already been made available to the public).
- Have 'individual character' (a subjective test meaning that the design must produce a different overall impression on the 'informed user' compared with existing designs).
Novelty and individual character are assessed on a world-wide basis against existing publicly known designs, although there are some limited exemptions which might excuse a known design from being taken into account and you can discuss these exemptions further with your design attorney.
What can a registered design protect?
There is a broad definition of what is registrable as a design. A registered design may be concerned with the whole of a product, or just part of a product. For example, the shape of the whole of a mobile phone might be new, or it could be that just the shape of the antenna is new and so commercially it is important to protect the shape of the antenna by itself. If the mobile phone is covered with a pattern, it could be that all or just part of the pattern is desired to be protected.
Features that can be protected include:
- Lines, contours and the shape of the product.
- Colours and patterns.
- Texture and/or ornamentation.
- Packaging, such as printed food cartons.
- The get-up of the product.
- Graphic symbols (such as an icon on a computer screen, a cartoon character, or a logo).
- Typographic typefaces.
- Graphical user interfaces.
Design protection in the EU
Registered design applications have traditionally been filed on a country by country basis, but it is possible to file some applications covering groups of countries. For example, a Community registered design covers all of the European Union (EU) countries.
The EU introduced the Community registered design as a pan-European form of design protection in 2003. It is a unitary form of registered design protection. Infringement and validity of the Community registered design are decided as single issues across the entire EU, and are not decided on a country-by-country basis by national courts.
Generally speaking what is protectable in the UK as a registered design will also be protectable as a Community registered design.
Global design protection
Under the (international) Paris Convention, your first (UK or Community) registered design application may be used as a springboard for filing corresponding foreign applications for the design in question as long as the foreign applications are filed within six months of that first filing date.
There is less harmony between registered design laws around the world than there is between the different patent and trade mark laws that apply around the world. Many European countries have updated their national design laws to be as modern as the UK design law that now applies. However, there are many countries around the world where this is not the case. The consequence is that although a design may be protectable here in the UK or Europe by means of a UK or Community registered design application, it may be that it is not protectable in large parts of the rest of the world by means of filing corresponding foreign design applications.
Filing a UK or Community registered design application
For a UK company or individual, the starting point would be to consider filing a UK registered design application and/or a Community registered design application within 12 months of having publicly disclosed your design (a 12-month grace period allows a designer or associated company to file a UK or Community registered design application up to 12 months after public disclosure). However, this grace period should not be relied upon if you intend to subsequently file corresponding applications outside the UK or EU, because not all countries provide for a grace period under their local law.
You will need to consider what exactly is the design that is to be protected, and how best to convey that in the UK and/or Community registered design application. It is usual to file photographs or line drawings illustrating the design that is to be protected, bearing in mind that what is shown defines the protection that is being applied for. So, if you wish to protect only the pure shape of a new product, the photographs or drawings that are filed should illustrate the bare product, without showing any irrelevant design features that are not to be protected as part of the registered design. This may mean that features such as patterns on the casing that could vary between different versions of the product and trade marks or logos (that a competitor in any event would not seek to use on a competing product) should not be depicted. Remember the principle that "what you show is what you protect".
Having prepared your drawings or photographs, the UK registered design application can be filed with the necessary accompanying forms at the UK Designs Registry.
How long does registration take?
Generally speaking, most applications are processed within a week or two and often, particularly in relation to Community design registrations, just a few days. This is primarily due to the lack of any formal examination procedure. Only formalities of the application will be assessed by the Designs Registry. When a registered design is granted it is published so as to be made public (unless deferred publication is requested).
Because designs are registered in such a short space of time, compared with the several years that are typical for a patent application, it is possible to obtain ownership of an intellectual property right quickly, which can be commercially advantageous.
Displaying the registered design number
Most companies choose to display the UK or Community registered design number on their product and associated packaging or marketing literature, or display a hyperlink leading to a webpage containing the number so as to warn competitors that the product is protected.
The product might actually be protected by a number of different registered designs, with each one being focused on a different aspect of the visual appearance. For example, there could be one registered design directed to the overall shape, another directed to the attractive pattern that is printed on the product, and another directed to an icon or menu that appears intermittently on the screen of the product when it is being used.
UK and Community registered designs have a maximum duration of 25 years from their filing date, subject to being renewed at five year intervals by paying an official renewal fee to the UK or Community Designs Registry by the 5th, 10th, 15th and 20th anniversaries of the filing date.
Registered design infringement
A competitor will infringe if they produce a product which uses the same design as your registered design, or which uses any design which does not produce a different overall impression on the informed user. This means that the competitor should not escape being liable for infringement merely by making trivial changes to the registered design.
If you own the registered design but do not produce the product yourself, you may wish to consider selling (assigning) ownership of the UK or Community registered design to a company that is interested in buying it, or else licensing use of the registered design to that company.
The other side of the coin to considering applying to protect the design aspects of your newly-developed product is to consider whether aspects of the design of that product will infringe third-party registered designs that have already been obtained by your commercial competitors.
It can be wise to conduct a precautionary clearance search through your competitors' registered designs on a country by country basis in the countries where your own new product may be manufactured, marketed or used. Conducting clearance searches through registered designs is not a precise science, but the searching that can be done can at least provide some reassurance.
In the UK, it is possible to perform a clearance search to some extent against existing UK registered designs, because the UK Designs Registry will perform this service. Unfortunately, there is no analogous arrangement that applies to Community registered designs, and instead a commercial searching service would have to be used. What searching facilities are available in other countries would require consultation with local design attorneys.
Unregistered design rights
Generally speaking, unregistered design rights are a glorified form of industrial copyright and come into existence (or subsist) automatically when a design is first created.
Unregistered design rights are of narrower scope than a registered design because infringement requires that there should have been a chain of knowledge in the copying of the original design through to the design of the allegedly infringing product. This is not the case with a monopoly right in the form of a registered design, where it is irrelevant as to the history of the design of the allegedly-infringing product, as infringement is assessed on a side-by-side comparison basis between the registered design and the alleged infringement. The maximum duration of unregistered design rights is also less than that of a registered design.
New product design should avoid infringing existing unregistered design rights belonging to third parties, such as your commercial competitors, by designing by an independent design process that you have documented (to establish its independence) without being tainted by knowledge of your competitors' earlier relevant designs.