Designs

What are Design Rights?

Just like any other form of Intellectual Property, ‘design’ is a commercially exploitable asset. It is also a complicated area when it comes to protecting your rights so getting professional help is a must.

Design rights can be registered or unregistered, just like trade marks. However we will just cover UK registered design rights here. Design rights protect the unique features that define the appearance of products or articles. In other words their shape and/ or the ornamentation applied to them. Registered design right will protect both 2D and 3D shapes.

However, they don’t protect functionality. You’ll have to look at patent protection for that.

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What exactly is UK registered design right?

If your design is protected by registration in the UK, it gives you, as its owner the exclusive right to use the design, or any design which does not produce on the informed user a different overall impression.

This definition may seem somewhat strange but in effect it says that your registered design right covers not only identical designs but also extends to cover similar designs which give the same overall impression to the ‘informed user’. The informed user, in all likelihood, is the person who is, notionally, the end user of the product.

Your design is ‘used’ if it is made, offered, put on the market, imported, exported or stocked by someone. This includes using a product in which your design is incorporated or to which it is applied.

So in short if someone does any of the above-mentioned activities without your consent they are infringing your registered design right.

Design Freedom

The design freedom that the author has is also taken into consideration when determining whether a design produces a different overall impression on the informed user.

Can any design be protected?

Unsurprisingly this is also complicated but the short answer is no.

To enjoy the benefits of registered design right, your design itself must meet the requirements of novelty and individual character.

  • Your design is novel (new) if no identical design (or no design whose features differ only in immaterial details) has been made available to the public before what is known as the ‘relevant date’.
  • Your design has individual character if it gives a different overall impression to the ‘informed user’ when compared to the overall impression given by earlier designs.
  • The extent to which your design is considered to have individual character will depend on the degree of freedom that you as the designer have in creating the design itself.So if your design is in an area which has less design freedom, the difference between registrable designs and earlier designs will necessarily not be great.
    Conversely where you have full design freedom the difference between earlier designs and registrable designs will be greater and this will be reflected in the infringement rights associated with your registered design.

Technical Function

  • Features of your design which are solely dictated by your product’s technical function are not protected
  • Equally features of your design which are there to permit the product to be connected to, or placed in or around another product to enable the products to function, are not protected.

Visibility of Component Parts

  • The design of component parts of complex products can only be registered if the component parts remain visible during normal use of the complex product.
    A complex product one that is composed of at least two replaceable component parts permitting disassembly and reassembly of the product.

Repairs of Complex Products and Spare Component Parts

  • Use of a component part to repair a complex product to restore it to its original appearance does not infringe a design registered for that component part.
    This measure is to enable a thriving market in non-OEM spare parts to exist, where the part in question must necessarily be of a particular shape to restore the correct appearance of the overall product e.g. car body spares.
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How can I get my design registered in the UK?

You must make a formal application to the UK IPO. Whilst the official fees to do this are relatively cheap, it is critical that your design is properly supported by the correct technical drawings. Submitting good drawings is critical to the rights that you gain from registration. Many a brilliant product has been unable to enforce its rights against infringement because of poor drawings which did not properly define the product’s design features were submitted.

Prior Disclosures and Grace Period.

Because a design must have novelty to be registrable if you abide by the motto “register first then disclose” you won’t go too far wrong.

However, if you make prior disclosures of your design within 12 months before the filing date (or the priority date if relevant) of your application these will not be considered to have destroyed the novelty or individual character.
Regardless if this grace period, you are much better placed to always follow the motto because many countries do not recognise grace periods, or have shorter grace periods than the 12 months here in the UK.

You also need to bear in mind that if you wish to market your product in other countries you really need to apply to register your design in each country from day one. Whilst you may be able to take advantage of the ‘priority window’ where relevant, once that is lost your design is ‘disclosed’ by registration in the first country which will prevent you from further registrations elsewhere. This is a key difference to the way that you can phase trade mark registration to other countries since prior disclosure is not a factor for trade marks.

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How long will my registered design last for?

Initially your rights last for five years, but this is renewable in five cycles giving you an overall 25 year period of registered design right.

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Can I attack someone else’s design registration?

Yes you can. Once a design is registered an application may be made to invalidate the design for various reasons, for example a lack of novelty, or a lack of individual character. Also if you hold a relevant earlier trade mark or copyright you can submit an application to invalidate the design based on these rights.

The complexity of design law cannot be overstated and with that the need to get professional help to protect your designs and manage your registered design portfolio. Call or email us now for an informal discussion.

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To make a no obligation enquiry, please either call us on 01284 619000 or make an online enquiry and we will be delighted to help you.

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