Top 10 Most Commonly asked Questions about Registered Designs

1. What is a design right?

There are two types of UK design rights: a registered design right, which must be filed at the UK Intellectual Property Office (UK IPO), or an unregistered design right, which arises automatically (similar to copyright).

Typically, design rights protect the visual appearance of the whole or part of a product from unauthorised use or reproduction by others. This is in sharp contrast to patent protection, which protects the functionality of a product or the underlying idea.

In broad terms, it is often better to secure a registered design right rather than relying on an unregistered design right. This will be explained further below.

2. Which designs can be registered?

Registered design rights can cover the whole or part of a product. A “product” is defined broadly to mean any industrial or handicraft item and is broad enough to cover not only 3D products but 2D products such as packaging, get-up, graphic symbols, logos, surface decoration and parts intended to be assembled into a complex product.

Certain products or features are excluded from registered design right protection including:

1. Features of appearance of a product which are solely dictated by the product’s technical function. An example might be a specific mesh in a filter.
2. Features of appearance of a product which must necessarily be reproduced in their exact form and dimensions so as to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to, placed in, around or against, another product so that either product may perform its function (known as “must fit” and “must match” designs). An example of “must fit” would be the pins of a plug which must fit with the socket to enable the plug to work. “Must match” would apply to a car body part, such as a car’s light housing, which must match the appearance of another part of the vehicle to function.
3. Parts of a complex product which do not remain visible during normal use. “Normal use” means use by the end user. On this basis, a pattern on the inside of a fridge would be protectable, but a pattern on the back of the fridge would not be.
4. Designs that are contrary to public policy or accepted principles of morality.

3. What is the threshold for registered design protection?

To obtain a valid registered design right, the design must, at the application date, be “new” (i.e. there must be no other identical design or design whose features differ only in immaterial details) and of “individual character” (i.e. it must produce a different overall impression on the informed user to any other earlier design).

This threshold is judged by considering designs which have been made available to the public before the effective filing date (or priority date) of the application. Such designs can be made available through marketing, publication of the design or use of the design. Only designs which have become known to those specialising in the business sector concerned are considered as part of the design corpus, which means that obscure design disclosures are not likely to be considered.

This is a much higher threshold than for unregistered design rights (which must be original and not commonplace) and not every design will be able to meet the threshold for registration.

4. Can you disclose your design before filing?

Yes, there is a 12-month grace period before filing the design to enable the applicant to test the market and determine if the product is likely to be successful. As such, any disclosure made by the applicant within that 12-month period will not form part of the design corpus which is considered when assessing if a design is new and has individual character.

In other words, after disclosing the design to the public, you have 12 months to decide if you wish to apply for a registered design right. During this period, you may be able to rely on an unregistered design right.

That said, it is always better to seek protection of a design as soon as possible because if a third party independently designs an article before the design is filed and the article produces the same overall impression, the design will be invalidated. Moreover, many countries around the world do not have a grace period, so disclosure may make it challenging to secure protection outside the UK.

5. What do registered design rights protect against?

The registration of a design gives the registered proprietor the exclusive right to prevent others from using the design or any design which does not produce on the informed user a “different overall impression”. This means that the registered design proprietor can prevent others from making, offering, putting on the market, importing, exporting or stocking any product which infringes the design right.

That said, there are some exceptions to infringement, including acts done privately and for non-commercial purposes, acts done for experimental purposes, and certain acts of reproduction for teaching purposes. Further, repairing a complex product to restore it to its original appearance by using a component part does not infringe the registered design right.

6. How long does the protection of a registered design last?

Design registrations last for 5 years from the date of registration, but they can be renewed for up to 25 years. In contrast, unregistered design rights can last for a maximum of 15 years, but usually only last 10 years from first marketing and in the last 5 years are subject to a licence as of right, which is a form of compulsory licensing.

7. If I make a design during the course of my employment, who has the right to register and own it?

Generally, employers are the original proprietors of any IP rights in designs made by employees in the course of their employment and thus should have the design registered in their name.

On the other hand, independent contractors generally own any registered design right created in the course of their work. To depart from that default position, any party engaging a contractor should ensure that, pursuant to the contract of engagement, any IP rights are assigned to them.

8. How quickly can I secure a registered design and what does it cost?

The process to secure a registered design is swift and straightforward. It can take a couple of weeks.

The UK IPO, when processing your design registration application, does not make any checks for prior disclosures of your design or designs with a similar overall impression. Although that quickens the application process, it does increase the risk that registrations can later be found to be invalid, so being correctly advised when drawing up design applications can be crucial to secure the optimal scope of protection.

The fees for obtaining registered design protection are very low and it is possible to file for multiple designs in a single application, which lowers the fees per design even further.

Many businesses are filing traditional trade marks (logos and packaging) as registered designs as well because the cost is lower and the rights are secured more quickly.

9. What can I do if someone infringes my registered design right?

If you believe that someone has infringed your design rights, having specialist IP legal advice is crucial.

The standard remedies in design right cases include, but are not limited to, an injunction to prevent the use of the design, damages or an account of profits, delivery up of the infringing articles and an order to pay costs.

10. Why not just rely on unregistered design rights?

There are many reasons why it is best to file for a registered design right rather than relying on unregistered design right protection, in particular:

1. Registered designs protect 2D and 3D products, so surface decoration, packaging, logos etc can be protected. Unregistered designs do not protect 2D products.
2. Registered design protection is available for up to 25 years, whilst unregistered design protection is available in most cases for 10 years (with the last five years being a licence of right period).
3. Registered design protection enables the design right proprietor to prevent the use of their design whether it has been created independently or consciously copied. In contrast, in the case of unregistered design right infringement, copying must be proved to enforce the design rights. On this basis, by registering design rights, the need to prove copying, which can be burdensome, may be avoided.
4. Any person can file a registered design application, but only particular persons can qualify for unregistered design protection. For example, a US company which designs a product and first markets that product in the US is not likely to have unregistered design protection, but such a company could file for a registered design without any restrictions.
5. As the proprietor of a registered design has a design certificate, it is far easier to prove when design protection commenced, whereas with unregistered design protection it can sometimes be difficult to show when the right commenced.

That said, unregistered design protection does offer some advantages over registered designs, including:

1. There is no cost.
2. The qualification threshold is lower, as the design must merely be original (i.e. not copied) and not commonplace.
3. There is more flexibility when it comes to enforcing rights, as you do not need to specify the design before the infringement takes place. With registered design protection, you need to specifically identify the design when filing, but with unregistered design protection you can see what the infringer has taken and then frame your right around the equivalent part in your product.