Our registered design rights FAQs are designed to give you an introduction to this form of intellectual property, and answers to common questions our intellectual property lawyers often deal with. Design rights can be a useful form of intellectual property protection, particularly for the creative industries like fashion, design and manufacturing, where appearance may be central to the appeal of a key product or service. If, after reading this FAQ, you believe you require legal advice, try our registered design services, including registration, strategy and enforcement.
Jump to individual registered design rights FAQs:
- What are registered design rights?
- What can be protected by design rights?
- What is the difference between registered and unregistered design rights?
- Who is a qualifying person for unregistered design right in the UK?
- What is a design right reciprocal protection order?
- What is a license of right?
- Are there exclusions to design rights?
- Can you copyright a design? How does it overlap with other forms of IP protection and what’s the difference?
- What is the different between a patent and a design right?
- How can a design right be registered?
- Do I need to conduct a design search before I file an application?
- What does a registered design right cost?
- How long does a design right last?
- When is the best time to register my design?
- Do I need to keep my design confidential?
- Is there a grace period for registered design rights?
- What rights and level of protection does a design right give?
- How do you prove design right?
- How can a design right be enforced?
- Can I register a design outside of the UK?
- How are design rights protected in the EU?
- How are design rights protected internationally?
- Can I sell my registered design right?
What are registered design rights?
Registered design rights are exclusive rights in the visual appearance of the whole or part of a design (such as texture, colour or shape) when applied to a functional object. It is a type of legal protection that protects the appearance of a product from being copied by anyone else other than the owner.
Unregistered design rights subsist automatically, to obtain a registered design, an application has to be made to the Designs Registry of the Intellectual Property Office (IPO) and there is a process that must be followed before the design right is registered. A registered design is a design right that has been registered with the IPO. The person who owns the registered design can prevent another party from copying a product that looks identical or similar to the one with a registered design without the need to prove that copying has occurred.
What can be protected by design rights?
Design rights protect the appearance of a functional product such as the shape, texture, colour, materials, lines and decoration provided that the design is different from any existing design – ie, it is original and provided that it is not commonplace in its field.
Examples of what can be protected by design rights are for example graphic designs, computer icons, patterns. Design rights protect the appearance of a product such as the tread pattern on a tyre.
What is the difference between registered and unregistered design rights?
Unregistered design rights (URD) arise automatically provided that a design meets certain criteria. This automatic intellectual property protection applies to original, non-commonplace designs and protects the design from being copied. In the UK this right is only applicable to three-dimensional designs, not mere surface decoration, and protects the shape and configuration of products both internally and externally.
Following the Intellectual Property Act 2014, an unregistered design is now defined as covering "non-trivial parts of articles” rather than “any aspect of the shape or configuration of the whole or part of an article” so as to better define its scope. Originality is explained as a design which is not “commonplace in any qualifying country in the design field in question”.
Registered design rights protect the complete appearance of a product including its physical shape, colours, materials, texture and lines. They involve a higher level of protection for designers who can register the design with the UK Designs Registry provided that the design is new, not offensive, without use of protected flags and emblems, and that isn’t an invention. A registered design can protect two-dimensional surface decorations.
To enforce unregistered design rights requires evidence of actual copying, whereas the monopoly that registered design rights has means no evidence of copying is required to constitute infringement. By comparison, unregistered design rights also have a shorter life span of up to 15 years in the UK and only 3 years in the EU, whereas the duration of registered design rights gives the owner protection of up to 25 years in the UK and EU, subject to the protecting being renewed every five years.
Who is a qualifying person for unregistered design right in the UK?
A qualifying person is someone who may be entitled to an UDR. This is 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 (see below).
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 is a design right reciprocal protection order?
Reciprocal protection under the Design Right (Reciprocal Protection) Order 1989 (No.2) 1989 (SI 1989/1294) is offered to the following countries:
- Anguilla
- Bermuda
- British Indian Ocean Territory
- British Virgin Islands
- Cayman Islands
- Channel Islands
- Falklands Islands
- Gibraltar
- Hong Kong
- Isle of Man
- Montserrat
- New Zealand
- Pitcairn, Henderson, Ducie and Oeno Islands
- St Helena and Dependencies
- South Georgia and the South Sandwich Islands
- Turks and Caicos Islands
This means that these territories are ‘qualifying countries’ for the purposes of qualification for a UK UDR.
What is a license of right?
During the last five years of the term of an unregistered design right, the design is covered by a ‘Licence of Right’ meaning that if any party asks the owner of the unregistered design right within this five year period, they are entitled to have a licence of the design right. If the owner and the potential licensor are unable to agree the terms of a Licence Agreement they must contact the Intellectual Property Office (IPO) to settle the matter provided that nothing can be referred to the IPO earlier than one year before the earliest date that the licence of right becomes available.
Are there exclusions to design rights?
There are certain things that cannot do to be protected by design rights:
- the design of a product must not be a method or principle of construction – design rights only protect a characteristic of a product but not how it was made.
- the design must not contain aspects of shape or configuration of an article which:
- enables the article to fit with another article so that either article can perform its intended function, or
- is dependent upon the appearance of another article of which it is intended by the designer to form an integral part.
Can you copyright a design? How does it overlap with other forms of IP protection and what’s the difference?
A design may be protected under copyright and unregistered design right and may also be able to be registered as a registered design. Whilst copyright will mainly protect any artistic or literary work included within a product or documents detailing the design of a product, design right focuses more on the shape, configuration and appearance of it. Like copyright, unregistered design right subsists automatically on creation of a design – there is no process to follow to obtain protection.
Like copyright, patents and trade marks, design rights can also be bought, sold or licensed and are used to prevent unauthorised copying of an original design.
Design rights also overlap with trade marks and patents to the extent that these other IP rights may be relevant to the same article or design. Logos are often protected as registered trade marks but not many people are aware that they can also be registered as a design right to offer additional protection. Whereas trade mark registration can be renewed indefinitely, registered design protection is limited to 25 years. It is not possible to register a design that has been publicly available more than 12 months before applying for registration, whereas there is no such restriction on filing a trade mark application.
Patents protect the way that something works rather than its appearance. So although there may be some overlap where a part of the appearance of an object affects how it works, the protection obtained by a patent is much broader than what is offered by a registered design right.
To give an example of overlapping forms of IP protection, a mobile app may involve copyright to the extent of the software code, design rights to the extent of the appearance and feel of the screen display or graphic icons and also possibly patent rights depending on whether it involves a new invention.
What is the different between a patent and a design right?
A patent must meet strict requirements of novelty and inventive step, and protects the way something works rather than its appearance. As such, a patent is not suitable where it is the shape or the appearance of an object that needs protecting.
Patents are much harder and more expensive to obtain compared to the quick and cost-effective process of registering design rights. This makes registered design rights a good option for companies seeking to protect digital and new media products such as apps and computer games. Like patents, a registered design right gives the owner a monopoly in their design and the right to take legal action to prevent others from exploiting a product identical or similar to that registered without the owner’s consent. There is no need to prove copying and, like patents, a registered design owner can prevent another person from producing a product that looks identical or similar to the owner’s, even if they claim to have never even seen it before.
How can a design right be registered?
Registering a design is a straightforward and cost-effective process. An application must be made to the Designs Registry of the Intellectual Property Office (IPO) with the prescribed fee. It is also possible to apply online to the IPO.
In the UK, the IPO will examine the application within two weeks. The examination process will involve examining the design for novelty and individual character and any designs which are dictated by technical function will be refused. If there are no objections the design will be registered immediately. If an objection is raised, the applicant has two months to respond. An applicant can request a hearing if he or she (a) believes that the application has been dealt with unfairly or (b) disagrees with the decision about the design. Once approved, the design will be added to the list of registered designs and made public unless registration is deferred, which can be done for up to 12 months.
In the EU, the design application will be checked to ensure that the formalities have been observed and the correct fee has been paid but there is no examination as to whether the design meets the other criteria for registration (that is, new and having individual character). The timeframe is shorter for EU registered designs which can be registered in as little as two days from the date of the application.
Do I need to conduct a design search before I file an application?
As with all IP rights, it is very important to carry out checks before you register a design. You will need to search the UK and possibly also the European / other international trade mark registers, or instruct a solicitor or trade mark attorney to do this for you. This can allow you the option, if the risks of an infringement action call for it, of modifying your design or negotiating a licence or other co-existence arrangement with a competitor, early on, rather than face costly infringement actions later.
You can search for prior registered designs using the UK IPO’s ‘Designview’ search tool. This is a database that contains UK, EU and internationally registered designs. You can enter details of the main distinguishing criteria of your design and the products it covers and /or the designer name, location, place of publication and also upload an image file to search from. You can also conduct unregistered design searches by way of Internet and social media searches or even instruct a specialist business investigator if the design is of particular importance and justifies the cost.
What does a registered design right cost?
The prices for registering design rights are slightly between the UK and the EU:
- UK - £50 per design (plus an extra £70 each for up to 10 designs)
- EU - €230 (plus an extra €115 each for up to 10 designs)
This excludes lawyers’ fees or other supplementary expenses like the cost of preparing the drawings.
How long does a design right last?
Duration depends on whether the right is registered or not:
- Registered design rights:
- 25 years provided that a renewal fee is paid to the IPO every five years.
- Unregistered design rights:
- 10 years after the first marketing of objects using the design, or
- if no marketing is done, 15 years after the creation of the design.
When is the best time to register my design?
You can register a design as soon as it has been created in order to gain priority over subsequent applications. You may also need to apply for registration quickly in order to gain priority from a previous design application that you have made. The application date is also important as a third party may only claim that they used a registered design in good faith before the application date.
This does not mean that you have to instantly publish your design though. You can defer publication, as explained below, in order to keep it secret from competitors until the moment that you decide to launch your product. This can be useful when you are filing a multiple design application so that not all the details are released at once. You can then decide which designs you want to publish from the multiple application later. It can also be useful when a patent application is also being filed so that the design does not become “prior art” before the patent has been applied for.
Do I need to keep my design confidential?
If you are not registering your design immediately or intend to defer publication for no longer than 12 months, then it is important that you keep the design confidential until such time as you decide to make it public. A competitor could copy it before it is protected. Make sure to keep your design drawings and documents in a secure place and record details and dates of when you first disclose the design, in a publication or advertisement, for example. If you need to share the design with a third party before you want to make it public, you should have a confidentiality or non-disclosure agreement drawn up by a solicitor for the other party to sign. This can be used to restrict use of the confidential information to a specific purpose and its disclosure to certain permitted individuals only. The information should be marked as confidential and records kept of what has been disclosed and when.
Is there a grace period for registered design rights?
An application to register a design should be filed before the design has been made available to the public anywhere in the world. There is a 12-month grace period before the application is filed and any disclosure by the designer during this 12-month period is not considered as making the design available to the public. An application may still be filed if the design has been disclosed and the 12-month grace period has not expired. The grace period only applies to disclosures made by the designer.
For EU registrations, you can defer the publication of your design for a maximum of 30 months. This means that the register will only show details of the design number, the filing date, the registration date, and the names of the applicant and representative but not the design itself. You must give the EUIPO at least three months’ notice to publish the design before the end of the 30 month period. There is a publication fee to pay once you decide to make the design public.
You may decide to file the EU application first as the deferment period is longer and then file a UK application subsequently to extend the deferent period for as long as possible.
What rights and level of protection does a design right give?
Unregistered design right in the UK protects the shape and configuration both internally and externally of three-dimensional designs of products. The right arises automatically and allows the owner to prevent anyone else using their design without permission but design infringement and copying must be proven. Unregistered design right in the UK lasts for up to 15 years in the UK.
A registered design in the UK protects the appearance and physical shape of a two or three-dimensional product such as its colours, materials, texture and shape. Registered design rights must be applied for and a formal process followed but once registered gives the owner a monopoly in the design without proving copying. The owner can effectively prevent another person from producing a product that looks identical or similar even if they have never seen the owner’s product before. In the UK a registered design is protected for up to 25 years provided that the protection being renewed every five years.
How do you prove design right?
Unregistered design right arises automatically, provided that:
- the design is original – one that’s all your own work
- the design is non-commonplace – for example, it’s not widely acknowledged within groups of comparable products
Registered design must meet the following criteria:
- the design must be new
- the design cannot be offensive (it cannot feature graphic imagery or words)
- the design cannot utilise protected flags and emblems (such as the Royal Crown or the Olympic rings)
- the design cannot be an invention (if it was an invention a patent would be needed)
How can a design right be enforced?
To enforce either registered and unregistered design rights, infringement proceedings can be brought by the claimant before the courts to seek:
- damages or an account of profits,
- an injunction to prevent further infringement, and
- an order for delivery up or destruction of the infringing articles.
There are caps on the level of damages and costs that can be obtained.
The main difference between enforcement of unregistered design right and registered design right is that for registered design there is no requirement to prove that infringement was deliberate. Owners of unregistered design rights must be able to prove that (a) they created the design in the first place and (b) deliberate copying has occurred.
Can I register a design outside of the UK?
Yes you can register a design in the EU and internationally.
How are design rights protected in the EU?
For design protection in the EU, a design must be new and have an individual character. There are two kinds of EU designs:
- Unregistered community design (UCD)
- Registered community design (RCD)
A UCD gives its owner the right to prevent unauthorised copying and unauthorised dealing of the design throughout the European Union. Unauthorised dealing means for example putting on the market, importing, exporting or possessing a product incorporating the protected design without the consent of the owner. There is no formal registration procedure to obtain a UCD and it comes into existence automatically when the design is first made available to the public within the EU. A UCD lasts for three years from when the design is first made available to the public. The owner of the UCD is the designer, or his or her employer if the design is developed in the course of employment.
An RCD gives the owner protection against similar designs even when the infringing design has been developed in good faith and without copying the protected design. An RCD is initially valid for five years and can be renewed up to a maximum 25 years. To get RCD protection, the design needs to be protected through application to the European Union Intellectual Property Office (EUIPO).
The scope of protection for both UCD and RCD is the same and they have the same requirements for protection (novelty and individual character). What differs is the rights granted. RCD owners have exclusive rights to use the design and prevent others from doing so whereas UCD owners can only prevent others from using the design commercially through copying. This means that there is no infringement of a UCD if another designer creates a design independently who is not aware of the existence of the UCD.
Following Brexit, the RCD and UCD no longer give protection in the UK. Further rights have been created to fill these gaps.
Re-registered designs and re-registered international designs
UK owners of RCD’s and international design registrations that designated the EU, that ceased to apply to the UK following Brexit, were given comparable UK registrations called ‘re-registered designs’ and ‘re-registered international designs’.
Continuing unregistered designs
UK holders of UCD’s, were given ‘continuing unregistered designs’ to cover the UK for the reminder of the term of the original UCD.
UK Supplementary unregistered design right
The scope of copyright protection being awarded by the courts is currently at an all-time high so if a design right has expired, it is worth seeking advice as to whether copyright can be used instead
How are design rights protected internationally?
The Hague Agreement is a system that enables you to apply to register a design in several international territories through one application via the World Intellectual Property Office (WIPO). You can apply to register up to one hundred designs in ninety-six countries.
This makes it easier to apply as you only need to submit one set of paperwork centrally and the WIPO then acts as an intermediary with the national registry offices of the various territories in the application. You can also apply to renew the registrations via the WIPO.
Once the application is received by the WIPO, it is examined and published by the WIPO and then sent to the individual national registries for them to complete their own examinations and checks. Each country will have its own criteria and procedures and timescales for the registration process. If all goes smoothly and no objection is communicated to the WIPO, individual country protection will be granted six months’ after the WIPO has published the application or twelve months’ if the country in question has its own substantive examination procedure. If the country does notify an objection to the WIPO during these periods, the objection will then follow the country’s particular timescale and procedure for either overcoming it or refusal of the application. At this stage, you may need to appoint a national attorney to assist in dealing with the objection.
If you are applying for registration in a large number of countries, the cost can be cheaper. It consists of a basic application fee plus the individual countries’ separate costs, which can include a second fee tax and or ‘complementary fee’. The cost also depends on the number of designs and the number of classes applied for.
The other option is to file individual design applications directly in each separate country. This can be more costly but it depends on how many countries you wish to register in and the particular fees and procedures for that country. You may need to appoint an attorney that is a specialist in the law of the particular country concerned, in order to prepare and submit the application and deal with any objections or oppositions that may arise.
Can I sell my registered design right?
As with other IP rights, you can assign both registered and unregistered design rights. This is done by way of a written assignment agreement signed by the parties to the transaction. You will need to include sufficient details of the Design Rights being transferred, especially if they are unregistered. Registered designs can be identified by reference to their registration particulars, such as registration numbers or application numbers. Unregistered rights must be identified by reference to the work itself.
For registered designs, the assignment should be recorded at the UKIPO or other applicable national IP office. This is done in the UK by submitting form DF12A to the IPO. There is no fee for this.
