Registered Designs – what are they and have you got one?
Emma Lowe, Senior Intellectual Property and Dispute Resolution Solicitor
22nd September, 2015
The Minister of Intellectual Property, Baroness Neville-Rolfe, DBE, CMG recently confirmed the government’s intention to amend UK designs legislation. The proposal would provide design owners with the option to mark their products with a relevant website address as a way of providing “constructive notice” to the public of their intellectual property rights. Emma Lowe, Senior IP and Dispute Resolution Solicitor reviews the impact of the intended changes.
The current law allows registered design owners to stamp or label their products with the relevant registered design number and the word registered. However, it has been recognised that “the current arrangements are cumbersome and do not allow for updating when details of registrations change”.
The proposals and the current law are only as good, however, as the people who are aware of them. So, for established companies who have a handle on their designs and registrations thereof the proposals, I am sure, will be welcomed. However, it is questionable how many companies out there, especially start ups, have the understanding that their designs could be registered let alone how they can currently be marked or could be marked in the future if the proposals are passed into law.
So, what is a UK registered design?
It is the two or three dimensional look of a product or design that has met a list of set legislative criteria rendering it capable of registration with the UK Intellectual Property Office. Once registered the design enjoys additional protection against infringers.
Examples of registered designs include logos, packaging, get-up, surface patterns and character images. Broadly speaking, it is the registration of a product’s shape and decoration resulting in better protection of it.
Why register a design?
Exclusivity. Once a design is registered it gives the registered owner the exclusive right to use it for up to 25 years. Consequently, the owner is in a much stronger position if someone were to infringe the design as opposed to if the design had not been registered. There is also strength gained in relation to the exploitation of the design. The 25 year exclusive rights in the design could make the exploitation of it incredibly lucrative for a business through licencing or other agreements. A further advantage is the way in which a registration can help build up the ever important goodwill and reputation in both the design itself and the business that owns it.
What’s the criteria?
The law states that a design is registerable if it:
1. is new. Case law states that there cannot have been any similar or identical designs disclosed anywhere in the world prior to the application for registration;
2. has individual character. Put simply this means that the design must give a different overall impression than earlier designs on a person who is familiar with designs/products in that particular field;
3. is in no way dictated by technical function or needed to perform a function; and
4. does not contravene public policy or morality.
If you think you have a registerable design…
The process of obtaining design registration would once have taken somewhere between three and nine months from the date of application to grant of the registration. The new regime, however, has reduced this time frame significantly. Therefore the registration of a design is a relatively quick method of protection and with official filing fees starting at as little as £40, is also inexpensive.
If you think you have a registerable design, make the application as soon as possible after the design is complete.
What if my design could have been registered, but I didn’t know and I’ve already disclosed it to the world?
A designer who discloses their design has a 12-month period in which to apply for registration of the design. Provided, therefore that your design has not been exposed for more than 12 months there is still a possibility of registering it. However, if during the 12-month period a third party makes a disclosure of the same or a similar design before you have applied for registration of your design your application may be refused on the grounds your design is not new.
The lesson here is to make an application for registration as soon as possible after disclosure of the design or, if possible, before.
If you would like any assistance in registering your product design, or any other assistance with intellectual property matters, please contact Emma Lowe or call 0113 320 4540.