In an increasingly image-conscious society, a product’s appearance can be the difference between success and failure in the marketplace. Businesses invest heavily in product design and must safeguard their expenditure by obtaining the appropriate legal protection.
Design registration is a quick, straightforward and cost-effective way to protect a product’s appearance. A registered design affords the owner a monopoly, meaning they can prevent any third-party use of a design that is the same or too similar to it, irrespective of whether the use resulted from copying or not.
In this article, our intellectual property solicitors explain the renewal process relating to UK-registered designs. We discuss the relevant procedures, timelines and costs and consider when a registration might be restored if you fail to renew.
Contents:
- What are the renewal timelines for registered designs?
- How much does it cost to renew your registered design?
- Preparation for registered design renewals
- How do you renew a registered design?
- Outsourcing renewals to a third party
- What happens if you miss the registered design renewal deadline?
- Can you restore your design registration?
- Summary
What are the renewal timelines for registered designs?
In the UK, a design registration lasts for an initial period of five years. The period of protection can be extended by renewing the registration every five years, up to a maximum of 25 years.
How much does it cost to renew your registered design?
Design right renewals are dealt with by the UK Intellectual Property Office (IPO), which charges a fee for each renewal. As at the time of writing, the relevant fees are as follows:
| 1st renewal | £70 |
| 2nd renewal | £90 |
| 3rd renewal | £110 |
| 4th renewal | £140 |
The majority of businesses seek the assistance of registered design solicitors when registering and renewing a design registration, who will charge a small fee for their work.
Preparation for registered design renewals
If you do not renew your design registration, it will lapse, and you will lose its protection. You must, therefore, keep accurate records of when a design was registered and is due to be renewed, and implement a reliable reminder system. In practice, most design owners enlist the help of registered design solicitors to do this on their behalf.
The process of renewing a UK-registered design is relatively straightforward. However, just as obtaining commercially effective design protection is more complicated than simply securing a registration certificate, consideration needs to be given to the design’s commercial reality before applying for a renewal.
Crucially, you must satisfy yourself that the product made to, or incorporating, the design, accords accurately with the registration. Designs regularly undergo multiple amendments both prior to release and during the period of use. If the design on the market at the time of renewal differs from that initially registered, it may be necessary to secure registrations for the updated version as opposed to renewing the original one, or to secure new registrations alongside it. In the context of an infringement action, the key evidence is the design registration, not the product on the marketplace. So, if your design has been modified since registration, a competitor using a design that is the same or similar to your product but different from the design registration may escape liability for infringement.
Simple amendments to the registered design can be made by notifying the IPO of the relevant change. These include, for example, changes to the proprietor’s or legal representative’s name or address. If your investigations indicate that the design registration no longer reflects the product in use, the original design cannot simply be tweaked; you must apply for a new design. The new design will need to satisfy the registration requirements of being new and having individual character. Be aware that the updated design registration may be invalidated by your own earlier design registration if the impression it creates on the informed user is too similar to that of your earlier registration.
How do you renew a registered design?
Once you are certain that the registered design accords accurately with the one in use and so wish to renew, the process is, broadly speaking, as follows:
Complete the renewal application
When completing the renewal application, you will need to provide information relating to the design you wish to renew, including the design number and full name of the registered proprietor. When completing the documentation on your behalf, our registered design solicitors will obtain all relevant information and complete the form accordingly.
Ascertain the fee payable
The applicable fee will depend on how far down the renewal process you are. The fees for each renewal are set out above.
Submit the application form with the fee
You can submit the form either online or by post.
When the IPO has processed your application, they will confirm the renewal.
Outsourcing renewals to a third party
Most businesses outsource the management of their design registrations to third party intellectual property professionals. Appointing a team with experience in design registrations and renewals, like ours, has numerous key benefits, which include:
- They invest in the best possible software, people and processes to ensure all registrations and renewals are affected swiftly, efficiently and on time. For you, the procedure is streamlined, hassle-free and cost-effective, particularly when you own a portfolio of several design registrations that need to be taken care of.
- Intellectual property solicitors will ensure that the protection afforded by your registrations is as watertight as possible. If tweaks have been made to the designs since registration, they will consider the effectiveness of the current registrations and advise on the necessity of making further applications.
- Design rights are territorial, so registering a design in the UK does not safeguard it in other countries. To ensure they are protected in all countries in which they trade, many businesses secure design registrations around the world. Several systems can be used to coordinate international registrations, and the renewal process varies depending on which is used. Intellectual property solicitors have experience with all relevant systems, both in terms of registration and renewals. They will identify the most efficient, cost-effective and hassle-free way to renew your registrations across multiple jurisdictions.
What happens if you miss the registered design renewal deadline?
You can renew a design registration up to six months before or within one month after the renewal date. If you miss the deadline, don’t panic - you may still be able to renew, but will incur pay late payment fees.
Late renewals can be made up to six months after the renewal deadline by paying the renewal fee together with a surcharge. The applicable surcharge is currently £24 for each month that has passed from the renewal date. Once you have done that, your design registration will be renewed as if the process had been completed in time.
Can you restore your design registration?
If you miss the late renewal deadline, you can nevertheless seek to maintain your design registration by applying for it to be restored. The procedure for doing so is, however, more arduous than simply paying a late renewal fee.
You have 6 months from the late renewal deadline to make an application to restore your design. The application is in a prescribed form, but you must include a statement and any evidence explaining why you failed to renew the design on time. A fee of £120 must be paid, and the application will be publicised in the Designs Journal.
Once you have submitted the application, the IPO will review it, consider your reasons for failing to renew on time and decide whether to restore the design based on the evidence provided. They will inform you of their decision in writing. If the IPO is satisfied that you had intended to renew on time, they will generally order that the registration be restored.
If the evidence does not convince the IPO that your failure to renew on time was unintentional, your application will fail. You then have two months within which to request a hearing and appeal the decision. If, notwithstanding your appeal, the IPO remains unconvinced that you had intended to renew on time, you will lose your registration.
It is worth noting that, if a third party has started using a design that is the same or similar to your design registration in good faith before your application to restore is published in the Designs Journal, they will be at liberty to continue even if your registration is restored. Since the primary purpose of a design registration is to prevent the dilution of your product’s goodwill and protect its position in the marketplace, this caveat can have far reaching consequences. So, whilst the possibility of restoring a design is useful when circumstances beyond your control have caused you to miss the renewal and late renewal deadlines, it should be considered a means of last resort.
Summary
Sometimes overlooked by business owners, design rights can be an invaluable tool in your armoury of brand protection. However, registering a design is only the first, albeit crucial, step in ensuring your designs are effectively protected. You must subsequently maintain your registrations by timely renewals and be satisfied that the registered designs accord with those being used commercially. If they do not, their value will be severely impacted. The easiest and most straightforward way to manage your design right portfolio is to outsource it to registered design solicitors, who will undertake the work on your behalf. We will make sure all appropriate renewal deadlines are met and avoid any of the adverse commercial effects that can arise when they are missed.
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