While a product in itself can be new, unique and distinctive, the actual Design can be an extremely valuable element of a product, that’s why it’s just as important to protect the Design and the rights of that Design.
What is a Design?
Design is all about visual appeal. So it’s the Design of a product not the actual product that we’re talking about here. And there are a number of ways to protect a Design:
- Registered Design
- Unregistered Design Right
There are other kinds of Design protection like Registered Community Design and Unregistered Community Design, but for now, we’ll just deal with the two main ones:
A Registered Design is a legal right which protects the overall visual appearance or impression of a product, or a part of a product, when it’s registered. Talking legally, Design is:
‘the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or ornamentation.’
A Registered Design can be a valuable Intellectual Property Right (IPR). It can help stop others from creating Designs which are too similar (and within the same geographical area that a particular Design is protected).
What is a ‘product’?
Let’s get an idea of what we mean by a ‘product’ first. It can mean things like:
- Graphic symbols;
- Typographical Design (a typeface or style of characters)
- Parts of products intended to be assembled into a more complex product;
- A three-dimensional product – for example an industrial or handicraft item (other than a computer program);
- A two-dimensional ornamentation – for example a pattern intended for display upon a product, or a stylised logo;
- ‘Get-up’ – for example protection may be given to the overall presentation of those products which comprise multiple components but are sold as one single item, like a board game complete with playing pieces.
How will my application be accepted?
For your Design to meet the criteria and to become a valid Registered Design, it must:
- Be new;
- Have individual character i.e. be distinctive.
Your Design will be considered to be ‘new’ if no identical (or very similar) Design has been published or publicly disclosed in the UK. For example, your Design would not be considered new if it had been ‘published’ on a website viewable before the date it was filed. However, you can apply to register a Design in the UK up to 12 months after you, the designer, first discloses it.
You may not be able to register your Design if it:
- Falls outside of the legal definition;
- Consists of, or includes, certain protected international emblems and flags;
- Is solely dictated by the product’s technical function;
- Is offensive.
How long does a Registered Design protection last?
In the UK, Registered Designs will give you exclusive rights in your Design for up to a total of 25 years, providing your Design is renewed every 5 years.
What is a Design Right?
The term ‘Design Right’ refers to the specific legal protection available to unregistered designs in the UK.
There are specific differences between Design Right (unregistered designs) and Registered Designs.
Registered Designs give you exclusive rights in a design for up to 25 years (in the UK) preventing people from using, making, importing, exporting, offering, putting on the market or stocking for those purposes, a product to which your design is applied.
Design Right (unregistered designs) gives you automatic protection for the internal or external shape or configuration of an original design, i.e. its three-dimensional shape. Design Right allows you to stop anyone from copying the shape or configuration of the article, but it does not give you protection for any of the two-dimensional aspects, like surface patterns.
If anyone else other than you carries out these activities without your permission, they may be held to have infringed your Design Right.
However, it is more difficult to prove infringement of an unregistered Design Right as you must be able to prove it was copied, or the potential for copying existed.
How long does Design Right (unregistered design) protection last?
If you have a Design Right (i.e. an unregistered design) protection is limited to the UK and lasts either 10 years after the first marketing of articles that use the Design, or 15 years after creation of the design – whichever is earlier.
Designs may be protected in all countries in the European Union through the Unregistered Community Design.
What are the benefits in registering my design?
Some of the benefits of registering your Design (Registered Design) are as follows:
- Exclusive rights in your Design;
- Protect all aspects of your Design;
- Long period of protection;
- Easier to enforce;
- Make money from your Design – a Registered Design will enable you to sell your Design and the Intellectual Property Rights (IPR) to it; or licence somebody else to use your Design whilst you retain the IPR;
- Public benefit – showcasing developments in Design stimulates further innovation.
Remember, if you choose not to apply for a Registered Design, your designs may still receive limited protection through Design Right (unregistered design) or Copyright.
How do I apply to register my Design?
Before applying to register your Design, it’s worth asking the following questions:
- Do I really need to register my Design?
- Am I the true owner or creator of my product?
- Is my Design already registered?
- Does my product meet the requirements?
- Have I received sufficient advice from an Intellectual Property solicitor or lawyer, or directly from the UK Intellectual Property Office (UKIPO)?
Applying for Registered Design
If you decide to go ahead and file for a Registered Design then you need to do the following:
- Fill out the appropriate application form together with providing illustrations of your Design;
- Pay the relevant fee to UKIPO;
- Once the UKIPO has received your application and fee they’ll write to you confirming your application number and filing date and send you a receipt;
- A UKIPO examiner will then check the application to ensure it meets the legal requirements for Design registration, usually within one month of receiving your application. They will also place your design in the correct section of the UKIPO database by classifying it according to the classification system;
- If the UKPO find any reason for objecting to your application, they will send you a letter explaining the results of the examination. You will have at least two months to:
- Attempt to persuade the UKIPO that the objections are not justified; or
- Overcome them in some other way.
- If you cannot overcome the objections you can either withdraw your application or the UKIPO will write to you telling you that it has been refused;
- If the application is acceptable and you have asked for immediate publication the UKIPO will:
- Send you a certificate of registration;
- Register your Design in the United Kingdom Designs Register;
- List the Registered Design on the UKIPO online database; and
- Publish your registration details in the UKIPO Electronic Designs Journal.
How much does it cost to register my Design?
If you wish to have your Design or Designs published and registered it will cost £60 to apply to register a single Design. In a multiple application, the first Design is £60 and then £40 for every additional Design.
Once you’ve checked out a few things for yourself you may benefit from popping into see somebody who is legally qualified to listen to your unique circumstances, at least for an initial chat, and then determine how best to progress with things.
We recommend you consult an Intellectual Property lawyer or Commercial lawyer if you’re in any doubt about the law around protecting Design.
DISCLAIMER: This article should not be regarded as constituting legal advice in relation to particular circumstances. This article is merely a general comment on the relevant topic.