IP information
What is a design right?
By John Rule.
The design or shape of a product or article can be the thing which makes a customer or potential customer think of you, your brands and your company, particularly if the designs are unique amongst what is currently available for that product. Find out how and why you should seek to protect something which is such an asset to your business.
Why is it important to protect my design?
The design or shape of a product or article can be the thing which makes a customer or potential customer think of you, your brands and your company, particularly if the designs are unique amongst what is currently available for that product. A design is therefore an asset which has a monetary value and if you do not have design protection others may seek to benefit from the investment you have made in your branding and image by copying it. Design protection provides assurances to your customers and prospective customers that you consider your product to be of sufficient importance and quality that you have taken steps to protect it. You should therefore ensure that you have the exclusive right to exploit your design and can use this right to stop third parties from copying, manufacturing or adopting features of the relevant designs.
What can I protect as a design?
As long as it is new, ie differs from any design which has already been made available to the public*, by you or any third party, in the UK or the EEA (European Economic Area) and if it has individual character, it is possible to file an application to register the outward appearance or aspects of a product or part of it in terms of the lines, contours, colours, shape, texture, material from which it is made and its ornamentation, as long as this is what gives it its unique appearance. So if there is such a feature of your product which is unique to you, then you should file an application to protect it before someone else does. It isn’t possible to protect something which is commonplace, but tweaking a commonplace design so that is has something unusual about it or combining it with something else may move it into the realms of being original and therefore protectable. It is also possible to register a design for the ornamentation of a product alone, ie a pattern which appears on a product or a stylised logo.
*“made available to the public” includes showing something on an internet site which can be viewed in the EEA before the application date.
When can I protect my design by registration?
Ideally you should file a UK application to register your design BEFORE you disclose it to anyone. However, there is a grace period in place with a Community Design registration so that you can market your product for a full year before you apply for your registration, without destroying its novelty. This system also covers the UK.
Does everyone find out about my design when I file an application?
Not necessarily – you can request that publication of the design is deferred for up to 30 months so that you can market it or develop it without it being disclosed in this way.
How and where do I protect my design?
You should consider where you are going to be marketing your product and file an application to protect it there. If you are going to start with the UK and hopefully expand into other parts of the EU then you should consider filing a Community Design application, since this covers all 27 current territories of the EU.
What does a design registration do?
- It gives you the exclusive right to use the design in commerce for the look and appearance of your product and also to take legal action against copying.
- You can also claim damages for someone else’s use of your design.
- The fact that you have taken the trouble to protect your design can serve as a deterrent to someone against them attempting to copy it.
- It is possible to stop imports of infringing products into the territory where you have a registration.
- If you need to enforce your registration against a third party who is copying your design, it is not necessary to prove that the design was directly copied. You can therefore take action against someone who has come up independently with the same design.
- It is a valuable asset to your business, protecting your market
- It allows you to sell your design and the intellectual property (IP) rights to it
- A registration allows you to license your design to someone else and still own the IP rights while generating an income (a royalty) from their use of your design
Is it easy to obtain a registration?
Yes, it is quick and easy, with very few formalities. It is also quite cheap to do since the official fees are low.
Unregistered design rights
In addition to the registration system, protection will also arise automatically subsist for three years from the time the design is first made available to the public under the community unregistered design right system and you can still choose within the first year whether to obtain a registered design under the CDR system.
There is an unregistered design right in existence in the UK too, under which only three-dimensional aspects of a design, and not including surface ornamentation or 2D designs such as textile or wallpaper designs, can be protected. The shape or configuration of a product can be protected as long as it is not commonplace, everyday or ordinary. The article cannot be protected in respect of features which enable the product to be functionally fitted or aesthetically matched to another, as it is not possible to prevent competing designs for spare parts from entering the market.
Competitors cannot be prevented from copying features of a registered design which enables their own design to be connected to or matched with something already designed by someone else. However, competitors will infringe design right if they unnecessarily copy features of a protected design.
The length of protection is 15 years from the end of the calendar year where the design was first recorded in design document or, if the design is made available for sale or hire within 5 years, then this changes to 10 years from the end of the calendar year that the marketing first occurred. In addition, you must be prepared to grant a licence of right to anyone who wishes to use your design to make and sell the product within the last five years of protection under UK unregistered design right. (This does not apply in relation to semiconductor chips).
In both cases, ie Community and UK unregistered design rights, you will need to prove that your design was directly copied to enforce your rights. You must also keep a record that proves the date on which your design was created. Without a design registration, ie with only unregistered design right or copyright, you will not be able to stop anyone producing similar articles if they have created the design independently.
If you have any questions about issues raised in this article, please contact us
This news item may contain information of general interest about current legal issues, but does not contain legal advice.