Protecting the appearance of an article
Unlike a patent, a design registration does not protect the way a product works, a product concept, or a method. A design registration protects the external, visible appearance of an article.
Also unlike a patent, obtaining a design registration is a relatively quick, simple and inexpensive process.
What is a registered design?
Design registration gives the owner of a design the exclusive right to exploit that design or one similar to it in the territory, which for example, could be the UK or Europe. A design registration is a monopoly right which is infringed whether the design has been copied or not, unlike unregistered design right, which is only infringed if copying has taken place.
The following information applies to both UK and Community registered designs
What is registrable?
A registered design protects a design, which means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation. A product is any industrial or handicraft item other than a computer program; and, in particular, includes packaging, get-up, graphic symbols, typographic type-faces and parts intended to be assembled into a complex product.
A "complex product"
A "complex product" is a product comprising at least two replaceable component parts permitting disassembly and reassembly of the product. To be registrabIe, a component part of a complex product must be visible in use by the end user.
For a valid registration, a design must:
- be new (or novel)
- have individual character
- not be solely dictated by the product's technical function
- not be solely dictated having to fit to another product, unless forming part of a modular system
- not be offensive
A design is novel if it has never been publicly disclosed by anyone anywhere in the world before the date of filing, or has not been publicly disclosed by the designer or as a result of the designer's activity more than one year before the date of filing.
A design has individual character if the overall impression it produces on an informed user differs from the overall impression produced on such a user by any design which was publicly available before the filing date.
Registration vs validity
The Community Designs Office (OHIM) and the UK Designs Registry do not subject design applications to any substantive examination. Consequently, although a registered design carries a presumption of validity, validity will only be tested during contentious or court proceedings.
A UK or Community design registration can be validly filed up to one year from a public disclosure by a designer or from a public disclosure made as a result of the designer's activity. This is useful, as it allows you to market a product and then later file a design application.
A UK or Community design application can include multiple designs, significantly reducing the costs per design.
Approximate costs for a UK design are in the region of £210 for a first design, and for a Community design are in the region of £698 for a first design.
What to do next?
If you have a product with visible features which are not solely dictated by function (in other words, the designer has some freedom to provide "eye appeal") then, because of the relative low cost and ease of obtaining a registered design, it is likely to be worthwhile filing a design application. Contact us for more details about filing a design application. In many cases, design applications are filed in addition to patent applications.
Registered designs last for a maximum of 25 years, renewable every 5 years.
International and foreign designs
Filing a UK or Community design application establishes a "priority date". Foreign design applications which are filed in other countries within six months of the priority date are effectively back dated to the priority date. This is a useful way of spreading out filings and the costs of filings.
For more information, please contact us (link)
Q. I've been told that if I create a design, then I am the
owner of it. Is this
A. If you are employed and create a design, then your employer is the owner of the design, and this is the case under both copyright and design law. However, if you are a designer who is sub contracted or commissioned to produce a design, then under UK design law, the person who commissioned the design is the owner of the design, not you, but under copyright law, you (or your employer) are the owner of the design. Because of these complexities, it is best to have a design or commissioning agreement in place before work is carried out.