The legal definition of a “design” is: “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation”.
Designs are therefore concerned with the aesthetics of a product rather than the technicalities of its construction or operation (these being protectable by means of patents).
A UK Design (enforcable throughout the UK) or a Registered Community Design (RCD) (enforceable throughout the EU) provides its holder with an exclusive monopoly right. It can therefore be enforced against any third party which uses the same (or sufficiently similar) design without permission, irrespective of whether direct/deliberate copying occurs.
An RCD is an exclusive monopoly right which extends across the entire European Union. The current members of the EU (as at December 2018) are:
Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, United Kingdom.
Once registered a design has a maximum term of 25 years, subject to payment of a renewal fee at five-year intervals.
As well as meeting minimum presentational standards, a design application must meet two criteria:
Both these criteria are to be judged with reference to designs which have been made available to the public (i.e. published or used) before the effective filing date of the application. Importantly though, no examination is performed in respect of these novelty and individual character requirements. However, the validity of an registered design may be challenged by a third party.
The filing of design application for the first time in the UK or EU establishes a “priority date” which can be claimed when filing subsequent design applications in other countries, provided that those further applications are filed within six months of the initial UK or EU filing date.
There are some restrictions on the types of products, or parts thereof that may be protected via the registered design system. The component parts of some types of products which do not remain visible during normal use cannot be protected. Furthermore, features of a design which are solely dictated by a product’s technical function, or are designed to fit with, or match with, another product may not be suitable for protection. An example of this may be the pins on a conventional electric plug which are shaped to enable them to fit into a corresponding plug socket. However, in most cases these issues are not clear cut and so present difficulties of judgement; therefore please contact us for advice before ruling out protection for any particular design on these grounds.
Generally it is good practice to register a design as soon as possible after the design to be protected has been finalised. However, there are limited circumstances in which it is possible to “test the market” in the UK and Europe by publicly disclosing or selling a product for up to 12 months prior to applying for registration. If not administered properly, this approach can have unintended consequences and we therefore strongly recommend that you contact us for advice before relying on the grace period.
Intentional copying of a design protected by an UK or EU registration is now a criminal offence in the United Kingdom. This strengthens the rights conferred by registered designs and discourages companies and individuals profiting from the manufacture (or use) of slavish copies of protected designs. In our opinion, this change in the law provides a significant additional commercial reason for applying to register designs. It also means that businesses and individuals will need to be extremely careful to ensure that they are not deliberately copying any aspects of a third party registered design given the criminal sanctions for doing so.
To enable us to file an application to protect your design(s) we need the following information from you:
The images (drawings, illustrations, photographs etc.) filed with a registered design application are incredibly important since it is these, and only these, that define the scope of protection provided by a design registration. You may provide us with your own images to file; however, we strongly recommend that you have us professionally prepare the drawings for you. There are two reasons for this: 1) this will ensure that you obtain the maximum scope of protection you are entitled to; and 2) we provide a guarantee with any such images prepared by us meaning that, if there are objections to the images themselves, then we will absorb the cost of overcoming any such objections. We cannot of course offer such a guarantee if the images are prepared by you. This guarantee does not extend to overcoming any other objections to e.g. the nature of the design etc. and nor does it extend to use of the same drawings in filing applications outside of Europe in view of varying international requirements for design drawings.
Example of professionally prepared design views below:
Calculating the costs of registered design applications is complicated by the fact that UK and EU registered designs have different structures and attract different fees which vary depending upon how many designs are to be covered. However, our calculator makes this a straightforward task. The calculator also automatically calculates and applies a discount to our professional fees where both a UK and EU registration is required since there is some overlap in the professional work required. The calculator can be accessed here.