The design of a product is often an important aspect that can influence purchase and help you protect your business from copycats.
Designs can be protected either via registered or unregistered rights.
Registered design rights
Registered design rights can be used to protect the appearance of a product. That includes any shape, colour, material, configuration, surface pattern or otherwise decorative feature of a whole or part of a product. The product may be a 3D product or a 2D product, such as a graphic symbol or a user interface.
A registered design right is a “monopoly” right which confers to the design holder the right to prevent a third party from making, using, selling, importing and exporting any article having a design that falls within the scope of the registered design. It is possible to file several designs to increase the scope of protection and capture variations in the design .
How to obtain a registered design in the UK
A design registration can be obtained by filing an application to the UK Intellectual Property Office (IPO).
Only designs which are new and have individual character can be registered. “New” means that the design must be different from prior designs. Having “individual character” means that the design must produce a different overall impression on the informed user compared with prior designs.
Unlike with patents, when a design application is filed, the examiner does not carry out a search of previously disclosed designs, however he will conduct a formal review of the application and check that the product or component for which the registration is sought does not fall within certain excluded categories. In particular, a registered design cannot be used to protect parts of a complex product which are not visible during the normal use of the product. Moreover, registration is not available for designs which are dictated solely by technical function, designs for products that must be produced in a specific way to enable them to connect to another product, and designs that are contrary to morality.
The grace period
Both the UK and the European Union have a 12-month “grace period” which allows a designer to apply for protection up to a year after their first disclosure. In other words, disclosures made by the designer within 12 months before the filing date of the application do not count towards the assessment of novelty and individual character when an application is filed.
This gives design owners the opportunity to put products on the market prior to investing in design registration and decide whether it is worth pursuing protection for it or not.
The grace period should be used with extreme caution, since many countries outside the UK and the European Union do not have provisions for it, or those which do might allow for a shorter period, therefore any disclosure prior to the filing date may preclude the possibility to register the design in those countries.
Moreover, the grace period only covers disclosures made by the designers and not by a third party who independently comes up with a similar or identical design.
What happens after registration?
The minimum term of a registered design in the UK is 5 years, after which the design must be renewed by paying the corresponding fees in order to be kept alive. A design can be renewed for up to four times, that is for up to a total duration of 25 years. However, in the final 5 years the owner must give to anybody who asks a “license of right”, the terms of which may be dictated by the IPO if the parties cannot reach an agreement.
Of course, it is possible for a design owner to withdraw a design registration or let it expire by not renewing the registration when the 5-year term lapses. A registered design may also be invalidated by a third-party, for example if they can prove that it lacks novelty or individual character.
How to register your design abroad
There are several ways to register a design abroad.
A design can be registered in other countries by filing individual national design applications. In the European Union, it is also possible to apply for a Registered Community Design (RCD), which is a single design right covering all countries in the EU. There is also an international registration system called the Hague Agreement which provides a mechanism for a design to be registered in over 70 jurisdictions via a single application.
If a design is to be registered in more than one country, it is possible to file an application in a first country and then claim priority over that first application when filing in subsequent countries. In substance, the priority claim confers to the later application the same filing date as the earlier application.
A priority claim is only possible if the application is filed within 6 months from the first filing and can be made in almost all countries in the world.
Unregistered design rights
In the UK, a designer can take advantage of a UK unregistered design right. Such a right exists automatically on making an article according to a design or on creating a design document. An unregistered design can be used to protect the shape and configuration of an article, however surface decoration (ornamentation) is not protected by an unregistered design. The originality threshold is very low, as the design merely needs to be new and not to be regarded as “commonplace”. In practice, however an unregistered design right is difficult to enforce as it requires demonstrating that the design has been copied by a third party. This means that a party is allowed to create the same or a similar design independently.
Unregistered design rights are somewhat complex since they have always been dealt with quite differently in the UK as compared to the EU and other territories. In addition, Brexit has further complicated things with the introduction of a new type of unregistered right dubbed “supplementary unregistered design” (SUD), as discussed in a previous blog post.
Why design owners should register their designs
We have previously written about the reasons why IP rights holders, and in particular SMEs, should protect their intellectual property.
Whilst time and costs of applying for a patent are generally high, applying for a design is relatively cheap and fast. Moreover, product design is often a time-consuming, costly and valuable activity but its result can be easily copied, which makes it one of the most easily infringed IP right. Therefore, in most cases the monopoly conferred by registration is well worth the cost of applying for it.
Registered designs are particularly useful for enforcing rights on online sale platforms such as Amazon, eBay and the like. Many global e-commerce stores have developed specific tools to allow intellectual property rights (IPR) holders to report and remove infringing listings and copycats. These tools generally require the IPR holder to upload a proof of IP Rights (IPR), such as a design registration certificate. In this regard, the UK government recently published a useful summary of tools provided by some of the main e-commerce platform.
Conclusions
Designs seep into every aspects of our lives, from the clothes we wear to the buildings we live in, and yet they are often neglected when considering IP protection. Perhaps one of the reasons is that they offer a somewhat weaker protection compared to patents. However, they are relatively cheap and easy to obtain and therefore should always be kept in mind when a new product is developed.
If you wish to find out more about the protection of designs do not hesitate to contact us at hello[@]scintilla-ip[.]com
Please note that this blog is for information only, the content of this post represents the opinion of the author and does not constitute legal or commercial advice. Scintilla make no guarantees as to the accuracy of the content of the post or of the webpages which are linked in the post. If you require IP-related or other sort of legal and commercial advice please contact us or consult a suitably qualified legal representative.