Designs

What is a Design?

In terms of intellectual property protection, design rights protect the visual appearance of an object or product, either in terms of its shape or the pattern and ornamentation applied to its surface.

In the UK and the EU, some design rights arise automatically whereas certain other design rights may only be obtained through registration. These are briefly explained below.


UK Unregistered Designs

Unregistered design rights arise automatically when an article has been created which incorporates the design or where the design has been recorded in a design document. To qualify for unregistered design right protection, the design must also be “original” and not commonplace in the relevant design field.

An unregistered design gives the owner the right in the UK to prevent others from copying the design, or a substantially similar design, without the owner’s consent. As with copyright, to enforce an unregistered design right the owner must show that an alleged infringer has copied the design  -  an independently generated design would not be an infringement. The owner may also prevent any unauthorised commercial dealing in an infringing product provided it can be proven that the alleged infringer knew, or had reason to believe, the article was infringing.

There are certain exclusions as to the types of design which qualify for protection and it is particularly important to note that elements of surface decoration and two dimensional designs are not protected (contrast with registered designs below). Similarly, shapes or configurations which enable an article to connect to or be placed against another object or are dependent upon the shape of another article and intended to form an integral part of that other object (eg many types of spare parts), are also not protectable.

Unregistered design rights last for 15 years, unless articles bearing the design are made available for sale or hire within 5 years of the date the design was created, in which case protection is limited to 10 years from the date of the initial sale or hire. 


UK Registered Designs

What can be protected?
A design can be the whole or part of a product and relate to its lines, contours, colours, shape, texture, material or the surface decoration applied to it. This can also cover product packaging, the get-up of the product, and graphical symbols, such as computer icons or logos.

How do I obtain protection?
An application should be filed at the Designs Registry section of the UK Intellectual Property Office.

What are the registration requirements?
The design for which you are seeking registration must be:

   new; and

   possess “individual character”.

In this context, a design is “new” if no identical design (or design that differs by no more than immaterial details) has previously been made available to the public. A design is deemed to have individual character if it produces a different overall impression on an informed user from existing or prior designs.    

These requirements are assessed by reference to designs which have been publicly disclosed before the date of application for registration of your own design. A search carried out prior to your application will, in most cases, identify any existing designs which are the same as your design or differ only in immaterial details, since these are likely to prevent a claim that your design has individual character.

For the purpose of assessing whether a design is new, it must not have been published or made available to the public prior to the date of the application. There are, however, some exceptions to this requirement, notably that prior disclosures made by the designer, or his successors in title, up to 12 months prior to the date of application do not apply to the assessment of novelty or individual character. But this exception does not apply to persons other than the designer and his successors. And any form of prior disclosure may prevent registration in certain other countries outside the EU.

It should also be noted that a design cannot be registered in respect of features or appearance of a product which are solely dictated by the product’s technical function or where the form or dimensions of the product are such so as to allow their connection with or placed in, against or around another product so that either product may perform its function (eg the way a nut fits onto a bolt).

Designs which incorporate intellectual property rights of third parties may not be registered nor may design incorporating national flags and emblems such as royal insignia and the Olympic symbol.

Applications covering more than one design can be filed simultaneously thereby reducing the filing costs compared to filing the applications individually. Each design in a multiple application is treated as a separate design and can be deemed a separate item of property in the same way as single-design applications.
 
How long does protection last?
A registration can exist for up to 25 years but must be maintained every five years (if required) by payment of a renewal fee.

What are the advantages of registration?
Design registrations allow protection of two dimensional designs, whereas design rights under copyright law only relate to three dimensional designs. Protection for registered designs is longer (up to 25 years instead of 15 years under copyright law). Unlike copyright, there is no requirement to prove copying in order to be able to take action  against a third party for unauthorised use of an identical or similar design. 


Unregistered Community Designs

These rights apply to designs which have been made available to the public since March 2002 and gives the owner the right to prevent others from copying the design throughout the EU. As in the UK, unregistered design rights arise automatically when the design is first made available to the public in the EU.

To qualify for protection, an unregistered Community Design, must be novel and possess individual character. These criteria are assessed much in the same way as the criteria for assessing registered designs (see above).

An unregistered Community design last for three years from the date it is first made available to the public in the EU.

Registered Design - EU

The principles of design registration in the EU very closely follow the principles under UK law, except that a Community Design Registration has validity in all member states of the EU, thereby reducing the overall costs compared to registering separately in each member state. The use of multiple designs in a single application, as per the UK system, is also possible for Community Design Registrations, thereby further reducing costs.

 

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