The appearance of an article or product is often an important selling point. A lot of work might have gone into designing a product, and if competitors were able to make their products look the same you could lose an important advantage in the market.
The law protects designs in a baffling variety of ways – none of them entirely satisfactory. While original designs enjoy automatic protection for (usually) ten years, and sometimes copyright can give longer protection, the strongest protection comes from the registered designs system. Registration also helps you to prove that the design is yours, and also shows when you created it, which can be useful if someone else accuses you of copying their design.
With this in mind, Gemma Pickavant, registered design lawyer at Harper James discusses how you can register a design, the process for filing an application, as well as expected costs and timescales.
Can I register a design?
Yes, you can. Design registration has been possible since 1839 in the UK (and some designs were protected from 1787, but only if they were printed on linens, cottons, calicos and muslin). Over the years the protection given by registration has grown in scope and duration, and now offers a very useful form of protection for the appearance of products.
Registered designs give the strongest protection available, and it is not expensive especially compared with patents (which are concerned with how things work or how they are made, not with how they look, but have certain similarities with registered designs). But the criteria for registration is tough, and because there is no substantive examination of applications it is very easy to secure a registration that turns out to be invalid. Although, the modest application fee can be easily written off should it be determined invalid.
You need to be sure that you are the owner of the design before you apply to register it. If you created the design yourself, you are entitled to register it, and if it was created by an employee in the course of their employment the employer will be entitled to register it. If you commissioned the design from an independent designer, however, you do not own it automatically and you will need an assignment from the designer to avoid expensive disputes in the future.
An experienced intellectual property lawyer can quickly help you determine who owns the rights to a particular design if you are concerned about the ownership of intellectual property rights within your business.
What designs can be registered?
For registration purposes, “design” has a specific (but pretty broad) meaning. It means the appearance of the whole or a part of a product, and includes the lines, contours, colours, shape, texture or materials of the product or its ornamentation. Some features of a design may not be protected – we will come back to that later.
To be validly registered, a design must be new and have individual character. The novelty of a design is measured by comparing it against earlier designs, and just about every design ever made has to be taken into account – only very obscure designs will be left out of consideration. If your business relies on retro fashions from, say, the sixties, you’re unlikely to have anything novel: in some design fields, that’s exactly what the designer is aiming for!.
Over and above the need to be new, the design has to have individual character – to make a different impression on the informed user from the impression given by any existing design. So not only does a design have to be new, there must be what you might call clear blue water between it and the body of existing designs. And those existing designs may be for different products – what matters is their appearance.
There are some things that cannot be registered as designs: offensive matter, national flags, and official symbols are all unregistrable. So too are designs that are purely functional: features of a design that are dictated by the product’s function are excluded from protection, though other features of the design of the product may still be protected.
How to prepare your registered design application
Because registered designs are all about the appearance of products, it’s no surprise that the important part of an application, apart from obvious matters like your name and address, is pictorial. You will need to submit the Registry representations of your design – which may be drawings or photographs. You can’t file a sample, you have to stick with just two dimensions, but your intellectual property lawyer can file a number of views to convey a comprehensive impression of what the design looks like.
A single application can contain up to fifty designs. This can be useful if you have many different patterns that you apply to identical products (the same basic shape of tea cup, saucer and plates, for example, or fabrics or wallpaper) but you can include fifty designs for different products in a single application if you wish – there doesn’t have to be any connection between the designs, except that they are yours.
The rules about applications are quite formal, and it is usually advisable to instruct an registered design lawyer with experience of registered design applications to prepare the application for you.
Filing an application
The application form itself is simple. Your registered design lawyer can choose to defer registration of your design for up to 12 months – useful if it embodies an invention for which you wish to obtain a patent, because deferring publication will ensure that the novelty of the invention is not lost or jeopardised by the registration of the design. Choosing and preparing the illustrations of the design, to maximise protection without claiming something that you are not allowed to claim while also keeping within the rules, is the most difficult aspect of putting an application together.
How much does it cost to register a design in the UK?
The official fee for an application to register one design is £50, if filed online (a postal application will cost £60). Up to ten designs, the official fee is £70 online and after that it increases in steps of ten designs to a maximum of £150 for 50 designs. If filing by post, the fees are much greater: £40 per design after the first. It is important to note that this cost does not include any legal fees associated with the application. Even with the additional cost of legal fees the level of protection offered still represents great value.
How long does the process take?
The application will be dealt with in two or three weeks. That is one great advantage of there being no substantive examination of the application.
How long does the protection last?
The way the law expresses it, protection lasts for five years, and can be renewed four times. It might have been clearer to say “25 years, with five-yearly renewals”, but that’s essentially what it means. Failure to pay a renewal fee will mean you will lose your registration, but (unlike trade marks) you won’t lose your registration if you don’t use the design. For a small fee you can instruct an registered design lawyer to renew your licence on an ongoing basis.
25 years is quite a long time, especially as you might well redesign your products in that time. If you have patented technology, registered designs can help you “evergreen” your protection: the technology will get 20 years’ protection under the patent system, but once that has expired customers might continue to buy your products rather than competitors’ because they like the up-to-date appearance of your latest models – which, if you have registered designs, you can stop the competition imitating. Think how a well-known vacuum cleaner manufacturer has managed to keep its place in the market long after its basic patents expired, by producing a series of attractive products that consumers love to own.
What does the protection cover?
Once registration is complete, you can (and should) display the registered design number on the products you make, or their packaging, so the world knows you own the registered design. You have the exclusive right to use not only the design but also any design that does not produce a different overall effect on the informed user – in other words, designs that are similar enough that someone who knows that field of design work won’t consider them distinct.
Your exclusive right to use the design covers making products, offering them or putting them on the market, importing and exporting them, or using a product in which the design is incorporated or to which it is applied. There’s not much you can do with a design that isn’t included. Stocking a product for any of these purposes is also included, so retailers and wholesalers as well as manufacturers and importers can infringe, and it’s not necessary to prove that they have been making sales.
There are some complicated exceptions from protection, intended to ensure that registered designs don’t result in monopolies in the spare parts market. In addition to the exclusion of features dictated by function, which covers many features of mechanical parts that have to fit into another to do their job, copying the design of a component part of a larger product (say the wing of a motor car) which may be used to restore the appearance of that larger product is not an registered design infringement.
Registered designs are an important component of your intellectual property portfolio if you make just about anything where appearance is important to your customers. Registration is cheap and it is relatively easy to add some registered designs to your intellectual property portfolio. They are a very cost-effective way of protecting your businesses product designs.
To learn more about registered designs read our registered design FAQ.