Design rights

We can help you protect your work through registered and unregistered designs. A Community Registered Design, for example, offers cost-effective protection throughout the European Union.

We have considerable experience in dealing with the protection of registered and unregistered designs, both in the UK and abroad, and can offer advice and support in this area.

What is a registered design?

A registered design is a form of IP protection which protects the appearance of a product or part of a product. Any industrial or handicraft item can be protected including packaging, graphical symbols and typefaces.

A registered design confers an exclusive right on the owner to prevent others from exploiting the design, generally for a period up to 25 years.

Why is a registered design valuable?

If the value of your product is linked with its appearance then a registered design is a valuable form of protection. In comparison with patents, registered designs are relatively cheap and quick to obtain. A registered design may also serve as a business asset that supports the value of your company and can be exploited commercially. (For example, the design may be licensed to other parties in exchange for licensing fees.) A registered design may also serve as an effective marketing tool and attract investment.

What designs are registrable?

A registered design must relate to the appearance of the whole or a part of a product. Aspects that may be protected can result from the features of, for example, the lines, contours, colours, shape, texture or materials of the product or its ornamentation.

By way of example a registered design may protect the appearance of a product such as a mobile phone. A registered design may also protect a part of the mobile phone, such as a novel keypad design.

How do I get a registered design?

A registered design can be obtained by filing a representation of your design (usually consisting of one or more drawings or photographs) at a relevant intellectual property office. For example, a UK design can be registered by filing your design application at the UK Intellectual Property Office (UKIPO). A Registered Community Design (RCD), which provides protection throughout the European Union, can be obtained by filing your design application at the European trade mark and designs office (EUIPO).

What are the criteria for registrability?

The design must be novel and have individual character. A design is novel if no identical design has been disclosed previously. A design will generally possess individual character if it differs from previous designs by more than immaterial detail.

There are some exclusions from registrability. For example a registered design cannot protect any feature whose appearance is dictated solely by function. There are also “must-fit” and 'not-visible' exclusions. The 'must-fit' exclusion prevents the protection of designs that are shaped so as to be functionally fitted to another article. This exclusion does not apply to products that are part of a modular system. The 'not-visible' exclusion prevents the protection of a component part of a complex product if that component part is not visible during normal use of the product.

You may want to consider filing a patent application to protect any functional aspects of your design.

When can I disclose my design?

Both UK and European Community Designs have a 12 month grace period meaning that you have up to 1 year after disclosure of your design for filing your design application. However, in some circumstances it may be best to keep your design confidential until the application is filed, particularly if you are also thinking of filing design applications in other countries which may not have a grace period provision, and/or you are also thinking of filing a patent application.

Can I keep my registered design a secret?

You can request deferred publication for both UK and Community Registered designs. For a UK Registered Design you can defer publication for up to 12 months from your date of application. For a Community Registered design you can defer publication for up to 30 months from your date of application. Requesting deferred publication can be useful if you want to make preparations for manufacturing your design before the design is made available to the general public.

What’s in a registered design application?

The registered design application must include a clear depiction of the design to be protected. The depiction may include up to seven views of your design. It is also possible to file multiple designs in a single application, which can be useful for covering variations of your design. The application form will also include details of the identity of the designer (i.e. the person or persons who devised the design), as well as the entity which owns the design (e.g. company name).

Where do I file a registered design application?

A registered design confers a territorial right. Therefore, if protection is required in more than one territory, a design application must be filed in each of those territories. This may be done either through the relevant national patent or design offices, or through regional patent offices (such as EUIPO) which provide a centralised application process enabling design protection to be obtained in multiple countries from a single application.

Practically speaking, most applicants make use of an international convention that allows you to file in your own country first, and provides six months to file further applications elsewhere.

How much does it cost?

Costs vary depending upon the number of territories in which protection is required. Due to the relatively straightforward examination procedure for designs costs are typically a lot lower than those for obtaining a patent. Filing a Registered Community Design is a good value option for obtaining design protection throughout the European Union through a centralised examination procedure.

How long does it take to get a registered design granted?

If no objections are raised to the application then a registered design can often be obtained within three months of filing the application.

Am I free to use my design?

It is important to note that whilst a granted design enables the owner to prevent other parties from using the design covered by the registration, it does not give the owner the right to exploit the design freely. It is still necessary for the owner to consider if using their design infringes any third party rights.

 

Find out how we can help you

 

website by Storm12    Top of page

Page White and Farrer © 2018  



This website may use cookies to provide an improved experience. You can refuse these cookies by changing your browser settings.
To remove this message, click here to accept cookies.