A business may place a great deal of value on the unique appearance of its products and the way they are decorated. The design of a product may be its most distinguishing feature that sets it apart from competitors.
In this guide our intellectual property solicitors discuss why it is important to protect your designs and the difference between registered and unregistered design rights.
Contents:
- Registered Designs
- How does registering a design provide legal protection?
- What are the benefits of having exclusive rights to a registered design?
- What criteria must a design meet to be eligible for registration?
- What documents are required for the registered design application?
- Registered design registration process
- How long does registered design protection last?
- What is the process for renewing a registered design?
- Unregistered Designs
- What is the scope of protection for unregistered designs?
- What are the challenges of relying on unregistered rights?
- How do businesses enforce their unregistered design rights?
- How does the legal status and recognition differ between registered and unregistered design rights?
- What is the scope of protection offered by registered and unregistered designs?
- What mechanisms are available for enforcing registered and unregistered design rights?
- When is it advisable for a business to use registered designs?
- How do businesses balance the cost of design protection with its benefits?
- International design protection
- Summary
Registered Designs
The UK, European Union and many territories of the world allow the registration of designs. A registered design protects the overall visual appearance, shape and decoration of a product, or a part of a product. You can protect two-dimensional designs and surface patterns as well as a three-dimensional products.
How does registering a design provide legal protection?
Once a design is registered, the owner can take action against someone copying it without having to prove ownership or creation as the registration itself provides evidence of this. Registration gives you a twenty-five year monopoly for the design for a relatively low cost. The design can be licensed and sold by you. A registered design is easier to enforce than an unregistered design as no proof of intentional copying is required. Registered designs are often seen as a stronger form deterrent to would-be infringers.
What are the benefits of having exclusive rights to a registered design?
The registration of a design gives the registered design rights owner 'the exclusive right to use the design and any design which does not produce on the informed user a different overall impression'. You can take legal action against someone 'making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied or stocking such a product for those purposes'.
What criteria must a design meet to be eligible for registration?
To qualify for a registered design right in the UK, the design must be new and have individual character. A design would not be considered new if it were 'published' or made public before the date the design application were filed. You can apply to register a design in the UK up to twelve months' after the designer first discloses it and so can defer registration for up to twelve months' from the date of application.
A design cannot be registered if it contains offensive material or if it contains depictions of national flags, official emblems or hallmarks, without permission to use them.
A design is not allowed to be registered if it is purely functional in nature, i.e. it subsists 'in features of appearance of a product which are solely dictated by the product’s technical function'. This has been interpreted to mean that the design only has a functional purpose. Whether or not alternative designs exist or may exist for the same function is not relevant to the question of whether the design is purely functional.
There is also a ‘must fit’ exception for items that must conform to a certain form and dimension in order to be able to be connected with another product so that either product can perform its function.
What documents are required for the registered design application?
Designs are registered at the UK Intellectual Property Office (UKIPO) by applying online or by post, submitting the IPO’s application form together with detailed illustrations of the designs and a registration fee. You can file up to fifty designs in one application. The fee is £50 for one design and £150 for up to fifty designs.
The illustrations must meet the criteria designated by the UKIPO including showing the design against a plain background and only including objects necessary to demonstrate the design itself. For an online application, each design can have up to twelve illustrations. If you want to include more, you will need to submit the application by post. Each aspect of the design i.e. side view, end view etc must be in a separate illustration. The illustrations must be in the form of photographs, line drawings, computer-aided design (CAD) or rendered CAD and must all be the same type. There must be no other text or information included, other than aspects of the design itself. Designs consisting of a repeating surface patterns must show enough of the pattern to show how it repeats in full. You can include a limitation or disclaimer in the illustration to delete aspects that do not form part of the design, by blacking out or highlighting certain aspects or including a line of explanatory text.
Registered design registration process
The first step, before you register your design, is to conduct searches to check that no-one has already registered the same or a similar design. You will need to search the UK and possibly also the European/other international design registers, or instruct a solicitor or trade mark attorney to do this for you.
The UK IPO has a Designview search tool which can be used to search for designs registered in the UK, EU and internationally. There are various search criteria which can be used to search by such as ‘verbal element’, ‘territory’, ‘owner name’, ‘designer name’, classes of goods/services registered ('Locarno classification') and registration date. You can also upload an image file to the search tool to search by graphic representation of the design.
Jersey and Guernsey have their own design registers so separate searches can be conducted via their respective Registers.
You can then prepare and submit your application. You will need to consider whether you want to defer publication of your design or not. You can defer publication of your design for up to twelve months from the date of your application, in order to keep it secret from competitors until the moment that you decide to launch your product.
Normally the IPO will examine the application within a couple of weeks of receipt and write back to you with an examination report. If it identifies any problems, such as incorrect or unclear illustrations, you are usually given a two month period in which to remedy these. After this period, if the application is accepted the design will then be registered. If the application is still not accepted, you can request a hearing with an Examiner to discuss the refusal.
If you have not requested to defer publication, the IPO will then publish the design in the journal of registered designs and send you a registration certificate showing the registered design number.
Unlike trade marks, there is no opposition procedure for registered designs but once a design has been registered, a third party can apply to have the registration cancelled or invalidated, for example on grounds that it is not novel or too similar to their registered or unregistered design.
How long does registered design protection last?
Once the design is registered, registered design rights can last for a final total of twenty five years, with renewal being necessary every five years.
What is the process for renewing a registered design?
You can renew a registered design up to four times, for a maximum of twenty five years by submitting a renewal form to the IPO. There is a fee to pay for each renewal. You can pay extra for a late renewal up to six months after the renewal date. After six months, the design will be removed from the register but you can apply for it to be restored for a further period of six months if you can demonstrate a valid reason for missing the deadline and pay a restoration fee as well as the renewal fee. You can appeal any decision within two months of notification.
Unregistered Designs
A degree of protection exists for designs that are not registered. This protection arises automatically, provided that the design fulfils certain criteria. There are certain limitations in that an unregistered design right (UDR) does not create a monopoly but is only enforceable if copying occurs.
What is the scope of protection for unregistered designs?
A design of the whole or part of an article can be protected if it is novel and not commonplace in the field. It is also only available for three dimensional designs and not mere surface decoration or pattern. The Intellectual Property Act 2014 amended the definition of an unregistered design to try to provide better clarity as to what exactly it protects. The right now no longer protects 'any aspect of the shape or configuration of the whole or part of an article' but only non-trivial parts of articles. A design will not be original if it is 'commonplace in any qualifying country in the design field in question'. As well as a ‘must fit’ exemption, there is also a ‘must match’ exemption for the appearance of unregistered designs that are dependent on the appearance of another design of which they are intended to form an integral part.
Protection lasts for the shorter of ten years’ after the designed product was first sold or fifteen years’ after it was created. In the last five years, a licence must be given to anybody who asks for one.
The owner of an unregistered design must be an individual resident in a qualifying country or a company or business formed in a qualifying country. A qualifying country is the UK or a territory under the reciprocal protection order which covers territories such as Hong Kong and New Zealand.
For designs created after 1 October 2014, the owner of a commissioned design is now the designer and not the commissioner, unless there is a contract in place stating otherwise.
What are the challenges of relying on unregistered rights?
Infringement action can be taken against anyone that makes articles that copy the design exactly or substantially, for commercial purposes or records the design exactly or substantially for the purpose of reproducing it for commercial purposes. The difficulty in enforcement lies in proving that the right exists and that it was intentionally copied. You must also have clear and accurate records of the design and when and by whom it was created to establish a claim.
Unregistered design right protection only applies to three dimensional designs and not to two dimensional surface patterns.
Unregistered design rights also subsist for a shorter term than registered design rights that are renewed for the maximum term.
As a consequence of Brexit there is now a further unregistered supplementary design right for UK unregistered designs. This is available for designs that were first disclosed in the UK on or after 1 January 2021 and which would otherwise have been protected as unregistered Community design rights. Unlike a UK unregistered design, a supplementary unregistered design right can also protect the ornamentation of a product and not just any three-dimensional aspects. It can protect unique prints and surface patterns on garments as well as unusually shaped items. Protection only lasts for three years from when the design was first disclosed to the public.
How do businesses enforce their unregistered design rights?
The design owner must bring an action in court to enforce their unregistered design right.
How does the legal status and recognition differ between registered and unregistered design rights?
A registered design right is a legal right that in itself provides proof of existence of the design, its date of creation and its ownership. This can only be rebutted by way of a cancellation or invalidation claim brought at the Registry with evidence to show that the design was not novel or created by the owner or does not meet other requirements of registration.
An unregistered design right only exists if there is evidence to show that it was novel and not commonplace in the field at the time of its creation and was created by the person claiming to be the owner. This evidence must be produced whenever the owner wishes to enforce the unregistered design or defend it against a claim.
What is the scope of protection offered by registered and unregistered designs?
Once registered, a registered design gives the owner an exclusive monopoly in the design allowing them to take action against anyone else using it or a design which does not create a different overall impression without the owner’s permission. Unauthorised use of the design can include manufacturing, dealing in, importing, exporting, stocking and using a product incorporating the design. Having knowledge of the design is not necessary to infringe it.
An unregistered design right is only infringed by someone deliberately copying the design or knowing or reasonably knowing that an infringing article is in their possession, or is being sold, hired or imported by them.
There is a defence for infringing an unregistered design for private or non-commercial acts, experimental purposes, teaching and personal study. Anyone who has made ‘serious and effective’ preparations to use an unregistered design in good faith, can continue to use it if it is subsequently registered by someone else. Infringement will not be found where the subsequent design creates a different overall impression on an informed user but the copying of part of an article only can still constitute infringement.
What mechanisms are available for enforcing registered and unregistered design rights?
Actions can be brought in the courts to enforce both registered and unregistered design rights in order to obtain:
- damages or an account of profits
- an injunction to prevent further infringement, and/or
- an order for delivery up or destruction of the infringing articles
For registered design right infringement, you need to show that there is an infringing product in use in the territory in which you have registered your design and that this creates a similar overall impression to your design in the form that you have registered it.
It is harder to enforce unregistered design rights as you have to provide evidence to show when the design was created, that it was novel and not commonplace at the time of creation, your entitlement to the design and to prove that it has been copied.
Going to court can be costly and time consuming. A registered design owner has the additional option of bringing a cancellation or invalidation claim via the Registry, against another registered design that they believe has infringed theirs. This may be enough to stop someone from using a similar design, without the need to go to court. Having a registered design and the ability to cite the registered design number on a product is a clear deterrent against third party copying.
The following table illustrates how the two registered and unregistered design rights compare in relation to scope of protection and enforcement:
| UK Registered Design Right | UK Unregistered Design Right | |
| Duration | Up to 25 years’ from the date of filing of the application (renewable every 5 years). | 15 years’ from the date the design was first recorded or the first article was made to the design; or 10 years’ from the date of first marketing of an article made to the design. |
| Scope of protection | The appearance of the whole or a part of a product or its ornamentation (surface decoration) that is novel (has individual character and gives a different overall impression from earlier designs to the 'informed user') and has not been disclosed, other than during the 12-month period preceding the date of filing. | The shape or configuration of the whole or part of an article that is original i.e. not commonplace in the design field at the time of creation. Not mere surface decoration (two-dimensional designs on three-dimensional articles). |
| Exemptions | Must not be computer programmes; Technical function’ exemption; ‘Must fit’ exemption. | Must not be a method or principle of construction; ‘Must fit’ exemption; ‘Must match’ exemption. |
| Applicant | Anyone anyone who files an application for a design registration at the UK Intellectual Property Office. | The owner must be a qualifying person. |
| Nature of right | Monopoly in the design for the period of registration. Registered owner has exclusive right to use, make, offer for sale, put on the market, import, export or stock articles made to the design. | Ability to stop others from copying the design. |
| Criteria for infringement | No intentional copying necessary; Any infringing use in the UK of the design or of a similar design which does not produce a different overall impression on the informed user. | Copying necessary - copying the design to produce articles exactly or substantially to the design or dealing in articles that the infringer knows or has reason to believe are infringing articles. |
| Exclusions to infringement | Acts done privately, for non-commercial or experimental purposes; fair reproduction for teaching purposes; acts committed prior to registration in good faith; repairs by replacing component parts; prior placing on the market by or with the owner’s consent. | No evidence of copying; If copyright infringement can be pursued that action must be pursued instead; ‘Serious and effective’ preparations to use an unregistered design in good faith; Acts done privately, for non-commercial or experimental purposes; fair reproduction for teaching purposes; acts committed prior to registration in good faith; repairs by replacing component parts; prior placing on the market by or with the owner’s consent. |
| Remedies | Account of profits or damages; Injunction; Delivery up of infringing items. | Account of profits or damages; Injunction; Delivery up of infringing items. |
| Criminal offence? | Deliberate copying in the course of a business of a registered design. | No. |
When is it advisable for a business to use registered designs?
Registered designs are recommended when a business has a particularly important design or is likely to need to take frequent enforcement action. A registration can act as a deterrent to third parties to warn that the design is protected and should not be infringed.
How do businesses balance the cost of design protection with its benefits?
Unregistered design rights can be useful where a business continually creates many designs and it would be too costly to register all of them. Unregistered rights have some limitations, it is advisable to protect the most useful and profitable designs by way of registration. To get the most out of such registrations, you should think carefully when preparing the design registration application to ensure that its scope is wide enough to cover all potential uses of your design but not too wide so as to attract infringement actions against you. Prior searches of the Designs Register are recommended in this regard, to help ensure that you will not be infringing anyone else’s prior design.
Legal advice is recommended when preparing the application. The illustrations themselves should also be prepared with care and careful consideration given to the type of drawing submitted and whether it is likely to be deemed to include things such as surface decoration, as this will impact the scope of protection.
International design protection
The Hague System for International Registration of Industrial Designs is a streamlined regime for applying for registered design protection in more than one country through one application via the World Intellectual Property Office (WIPO). You can apply to register up to one hundred designs in ninety six countries.
Alternatively, you can file separate design applications in the individual territories in which you want to register.
The advantages of the Hague system are that you only need to file one application and you can then manage your registrations centrally through the WIPO. However, the timescales may differ from direct national applications. Protection is granted to a designation of an international application six months’ after publication by the WIPO or twelve months’ after publication for territories that have substantive examination procedures, provided that no objection has been notified to the WIPO by the national office in question. If an objection is notified then the national office’s own procedure and timescale for dealing with objections will be followed.
The rights granted will correspond to the nature and duration of registered design rights in the respective territories applied for but can be renewed centrally through the WIPO.
The cost depends on the number of designs and which and how many countries are included in the application, plus a basic application fee .
Summary
Design rights provide another very useful method of protecting original works, which may subsist independently or alongside copyright and trade marks. Scope and protection varies according to the exact nature of the design in question and care should be taken to ensure that you obtain the best protection available.
