Design Rights: how to protect your designs
Design rights protect the visual appearance or appeal of products. They can be the most effective and economical form of intellectual property (IP) owned by your organisation. Design rights can be registered or unregistered. New designs can be registered with various intellectual property offices around the world, and in the USA, where they are referred to as “design patents”.
How can I prevent manufacturers and /or big retail companies copying my graphics or product designs and mass-producing them?
If you are a designer, click here for a brief explanation.
In the UK, registered design rights protect the complete appearance of a product’s design; including its lines, contours, colours, materials, texture, and shape. Whereas an unregistered design right additionally protects the shape, appearance and configuration of products, both internally and externally. The design can take the form of a two-dimensional drawing or a three-dimensional design made to that drawing, or vice-versa.
The layout of a shop, packaging colours, and the brand name and logo chosen for the business, can all be subject to registered design rights. Registering design rights is also an appropriate way to protect websites from copycat competitors. Applications to register designs in the UK are filed in the UK Designs Registry, which is part of the Intellectual Property Office (UKIPO).
Community Design right covers gives rights in each of member states in the European Union (EU). A Community Design that complies with the requirements of protection for such designs is directly enforceable in each member state of the European Union. In a similar way to UK design regulations, the designer relying on a Community Design has the option of relying on either an unregistered Community Design right or a registered Community Design right. A registered Community Design is valid in all countries of the EU. The EUIPO only deals with applications for registered Community Designs, as an unregistered Community Design does not require filing for registration.
How to choose between registered and unregistered design rights
This section introduces the two types of design rights, and the following sections go on to explain them each in more detail.
Unregistered design rights are awarded automatically if the design meets the following criteria:
- The design is original and is all your own work, and
- The design is not commonplace or is not widely acknowledged within groups of comparable products.
If you feel it is vital to register your design in order to protect its appearance, physical shape, configuration and decoration from potential copycats, then the registration process at the UKIPO takes about a month. This is assuming that the design:
- Is new, and has an individual character,
- Is not offensive,
- Does not feature graphic imagery or words,
- Does not utilise protected flags and emblems (e.g. a national flag or the Olympic rings), and
- Is not an invention, nor a characteristic that is solely dictated by the product’s technical function, as this may require patent protection. More information on patents is available here.
Unregistered design rights tend to have shorter lives, in terms of length of time protection is afforded, and many aspects relating to the various aspects referred to above, can sometimes be difficult to prove. However, some businesses prefer to make use of unregistered design rights, simply because they consider registering a design to be costly and slow in comparison with the speed with which they develop new products, e.g. the fast-fashion sector.
Unregistered design right and design copyright holders looking to prosecute for an infringement must be able to prove that:
- The rights holders created the design in the first place and
- Deliberate duplication has occurred.
By contrast, in enforcing an alleged infringement of a registered design right does not require proving ownership of the right.
Although in order to be registered, a design must be novel, and difficulties often arise where the new design is similar to an existing design. The legal test is to assess whether, in the eyes of an informed user, the similarities are so strong that differences between the designs in question can be classed as being inconsequential; these differences are always “judged by the eye”.
A designer may have up to twelve months to make the new product available and to promote the design, before making a final decision as to whether to register the design work as a Community Design, or to allow the design to remain unregistered. If the designer or owner of the design fails to register the design in that twelve-month period, then the right to register the design is lost. If the designer wants to register a UK design, then he or she must undertake a design rights search prior to application, and register the design before it is shown to the public.
Further information on registered design rights and unregistered design rights is provided below.
What are Registered Design Rights?
With a registered design right, registration allows the proprietor to deal with the design as an item of property. The proprietor can mortgage, sell, and/or licence the right to use the registered design.
In the UK, as in the EU, a registered design can be protected for up to 25 years, subject to the registration being renewed every five years. Registration is relatively straightforward, and when you have obtained the design right (by registration), you may want to think about exploiting the right by licensing it to others. The official fees for UK registration start at £50.00. Currently, the official fees to register a Community Design start at €350.00 and more detailed information about that registration process is available on the EUIPO website, here.
Its worth noting that although Registered Designs are useful for protection against counterfeits, their narrow scope can mean that this protection can be circumvented by making an article look different to that shown in the Registered Design drawings.
In the recent past, the laws relating to registered designs have undergone significant change making them more relevant to the end user. The changes have been brought about by two legal measures; the first is a European Directive (98/71/EC) and the second is Council Regulation (EC) no 6/2002. The Directive caused the Registered Design Act 1949 to be changed radically and the Council Regulation introduced the availability of a Community-wide registered design. As a result, the advantage of registration is that it gives the owner a monopoly similar to the rights enjoyed by a patent proprietor.
Making multiple applications for registered design rights
Both the UK and EU registries allow multiple applications for more than one design, and do not restrict the designs to be grouped together. When filing multiple applications, the cost is reduced in comparison to making a single application.
Each of the designs in a multiple application is seen as a separate design and can therefore be licensed and/ or assigned separately. At renewal, not all the designs have to be renewed.
Overseas design registration
When making a registered design right application in the UK a “priority date” is generated. This date can be claimed as support for corresponding design applications filed abroad within six months of the UK filing date. It is also possible for a UK registered design application to claim priority from an overseas filing. For example, the same design can be applied for in the USA and then applied for in the UK, design right can be claimed from the date of application for the US “design patent”.
Even if you had made multiple applications at the same time (see above), it is still possible to claim different priorities for each design and to defer the registration and publication of only some of the designs.
Taking action for infringement or invalidity of a registration
The proprietor of a registered design can bring proceedings for infringement against any third party who applies the design, or one substantially similar to it, to products. In addition, the proprietor can also bring proceedings against anyone who trades in articles bearing that design. Unlike copyright, registered design can be enforced against a third party (such as a retailer) who has not himself or herself copied the proprietor’s design.
In deciding whether or not a third party’s design is sufficiently similar to the proprietor’s design, the documents deposited with the relevant registry are crucial. The remedies available to the proprietor of a registered design that may have been infringed include: court orders (injunctions), an order for delivery up, damages, accounts of profits and costs, as well as to curtail the use of the design on all types of products.
If you believe that a third party has registered a design that is similar to your own design, you can file a request to declare the third party’s registration invalid. Other potential bases for invalidity include lack of novelty, individual character, or that the proprietor is not entitled to the design.
Depending on your design, the registration process can be complicated; if you are uncertain as to how best to ensure full protection for your design in a cost effective manner, BRAND PROTECT can advise, and can undertake the registration process for you. Please call us on +353 (0) 15394211 for a free initial discussion about your application and, if you wish to proceed, to establish a fixed fee.
What is an Unregistered Design Right?
If a British citizen (or a citizen of the EU and certain other countries) creates a design then, on creation, the designer receives copyright protection for their design. This protection lasts for up to 15 years.
A Community-wide design right is created automatically when the design is first shown to the public, and is valid in all states of the European Union. If the design is not registered, it remains an ‘unregistered design right’ and lasts for three years from the date of the first showing to the public. However, beware, there may be no protection at all, as unregistered design rights do not exist in most countries outside the EU.
Although an unregistered design right lasts for up to 15 years in the UK, it is worth noting that during the final five years of any unregistered design right, the owner is obliged to give a licence of right to anybody who applies for such a right.
Brand Protect Expertise in Design Law and Regulation
BRAND PROTECT is a specialist IP law firm based in Dublin, Ireland and near Oxford, UK. The team has extensive experience in helping its clients to protect and exploit their designs. They understand the workings of design law and design-based businesses, and can use this knowledge to help you. In addition, BRAND PROTECT can represent you before the UK or Irish Intellectual Property Offices, EUIPO, or in court. Our aim is to give clients peace of mind, to resolve their issues, and to be cost effective in doing so. Our dispute resolution service is second to none. All this is fairly complicated, and at BRAND PROTECT we won’t charge you the earth for our services. Please call us on +353 (0) 15394211 for a free initial consultation about your design protection needs and how we can help you address them.