Frequently Asked Questions on Designs
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What is a design right?
A design right is a right of ownership in the appearance of the whole, or a part of a product (internal or external). The product itself is not protected. Whereas a patent protects the way a product functions or how it is manufactured, a design right protects those elements that make a product (or a part of a product) look unique. The owner of a design right has the exclusive right to reproduce the design for commercial purposes.
What is a design?
‘Designs’ are defined in the Registered Designs Act 1949 as, “the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, shapes, textures or materials of the product, or its ornamentation”. The ‘product’ may be an industrial or handicraft item (not including computer programs). For instance the body of a car, the cut of jeans, the appearance of a computer, or the handle of a knife could all be recognised as a design.
Do I have to register my design to get protection?
No. A design right is created automatically once the design has been recorded in a design document, or an article has been made to the design. In the UK, an unregistered design right gives the owner an exclusive right to use the design for 5 years after it is first marketed. Protection lasts for a further 5 years, however, within that period third parties must be allowed a “licence of right” to exploit your design commercially. The owner is entitled to receive royalties for use of the design. An unregistered Community design right (i.e. a pan-EU right) lasts for 3 years from the time it is first disclosed to the public.
What can be registered as a design?
Those features that make an object or a part of an object look original may be registered as a design. The lines, shape, contours, colours, and/or texture and material of an object may therefore form part of a design. Two-dimensional elements, such as ornamentation, graphic symbols and typefaces may also be registered as a design. Computer programs are expressly excluded. You should ensure that your design is original (i.e. an identical design has not already been made available to the public) before registering it, otherwise you could face a costly dispute resulting in your registration being invalidated.
Why should I register my design?
(i) An unregistered design right only protects against the act of copying. If a design can be shown to have been created independently, the owner’s right is not infringed. However, a registered design gives the owner monopoly protection. This means that even if a competitor innocently uses the same or a similar design right to that which you have already registered, this constitutes infringement. (ii) It is only by registering a design that surface ornamentation of a product can be protected. An unregistered design right will not attach to any two-dimensional elements. (iii) A registered design right can offer a maximum of 25 years protection, whereas an unregistered right in the UK only offers 5 year exclusive use. An unregistered design right cannot be renewed. The certainty of a registered right may help you secure financial backing, and thereby encourage future exploitation of the design.
Why should I protect my design?
The design of your product may be just as important as the branding of your company. Consider, for instance Apple’s iPod design. Without its futuristic shape and colouring, it would be difficult to distinguish from any other mp3 player. In order to fully protect your investment in your product, you need to prevent competitors from using your design.
How long does a UK design right last?
In the UK, a registered design right lasts for 5 years, but may be extended to a maximum of 25 years from the date of filing the application. An unregistered right lasts for a maximum of 15 years from the end of the calendar year when the design was first recorded, or 10 years from when the design was first made available to the public. However, after the first 5 years, third parties must be allowed to license the use of the design in exchange for royalties.
How can I tell if my design is novel?
A design is novel if no other identical or similar designs have been made available to the public prior to the date of registration. To assess novelty, you must decide exactly which elements of your product you wish to protect. If only one element of your product is unique, it is advisable to exclude in your application those parts which are standard. If, for instance, it is only the handle of a knife that is unique, you should state that protection is sought for the design of the handle, the shape of the blade being discounted. Before applying to register your design, it is strongly advisable that you conduct a search of the relevant database of designs existing in the territory in question.
What designs cannot be protected through registration?
(i) a design which appears the way it is for technical reasons, in order to make the product function (ii) a design which offends public morality or accepted principles (iii) a design which incorporates a foreign flag or protected symbol may not be used without permission from the country concerned (iv) your design must be novel at the time you apply. The novelty of your design will not be considered at the registration stage. If your design looks the same or similar to a design that has already been registered, your registration could be invalidated at a later stage.
How long does it take to register a design?
If there are no complications, a UK design registration can be completed within 2-3 months. A Community design may take up to 4 months to register.
Should I register my design if I want to keep it a secret?
If secrecy is vitally important to the success of your product, you might want to rely on unregistered design protection. However, although public disclosure of your design details is a prerequisite for registering your design, it is possible to defer this for a longer period. In the UK, it is possible to postpone publication of your design details for up to 12 months after the application date. Alternatively, you could seek a Community registration, which allows for a period of 30 months deferment.
Do I need to register my design before I put in on the market?
A Design right must be registered within 12 months of first being made available to the public, otherwise it will not be considered to be novel. This allows a one year grace period in which to test the product on the market before deciding to invest in a design.
Does my design right give me protection abroad?
An unregistered design right gives you protection in the UK for 10 years and in the EU for 3 years. A design can be registered in the UK through the UKIPO, in which case protection extends only to the borders of that territory. If you register a design through the OHIM, your design will be protected in the 27 member states of the EU [hyperlink].
Can I register more than one design in an application?
Yes. In the UK it is possible to register a number of new designs in a single application. While the addition of each design will increase the cost, this will be cheaper than filing separate applications. It is also possible to register multiple designs in the EU, so long as the designs are intended to be applied to products within the same class of the Locarno Convention [hyperlink].
What can I do with my design right?
A design right is a property right which can be sold, mortgaged or licensed. For the avoidance of future disputes, it is advisable to register any such transactions with the UK Design Registry. We can provide advice and assistance on all matters relating to IP sales, acquisition or licensing. Call us on 08450 361133.
Can I register my design in the EU?
Yes a design can be registered as a Community design. This means that the design may be protected throughout the 27 member states of the EU through a single application. A Community design lasts for 5 years from the date of filing, and can be renewed for periods of 5 years up to 4 times. Alternatively, a design can be registered in individual territories within the EU.
If my design has been registered does this mean it cannot be challenged?
No. In the UK and the EU the registration process only looks at the following formal requirements: (i) Whether there is a functional/ technical reason for the design appearing as it does (ii) Whether it offends public morals (iii) If it incorporates a protected symbol (iv) Whether it complies with the legal definition of a “design” If your design is not novel at the date of registration or does not have a sufficiently individual character, it can be invalidated. A registration could also be invalidated if the owner is not entitled to the design right.
Who can register a design?
The owner of the design can apply. If the design was done in the course of employment, unless there is proof to the contrary, the employer owns the intellectual property. In the UK, where a design is commissioned, the individual who commissioned the design owns the design.