Registering a design is a straightforward and relatively inexpensive process. It provides a monopoly in the design of up to 25 years (provided the registration is renewed every five years). The scope of the design depends on, for example, the extent to which it is different from existing designs (whether registered or unregistered). A registered design is protected across all products and not limited to the original product in which the design was first applied. Only the owner of the registered design can make articles using the design and there is no need for the owner to prove copying if the design is infringed.
What is registrable as a design?
The whole of the design as well as a part or parts of a product can be registered as a design to maximise the protection being granted. A registered design can be three-dimensional or two-dimensional and it can cover the shape of the design as well as ornamental features including the colour and texture of the design. Internal parts of a design and parts which solely fulfill a technical function are not registrable. For example, in Kwan Yang Motor Co Ltd v OHIM and Honda Giken (T-10/08), the inner workings of a lawnmower were not capable of protection. Examples of the types of designs which can be registered include packaging, logos and typefaces.
The registered design must also be “new” and have “individual character”. This means it needs to give a different overall impression to any earlier designs which are already in the public domain. There is a one year grace period in which to register a design after it has been made public. This provides an opportunity for businesses to trial products on the market before incurring the relatively inexpensive costs of a registration.
Figure 1 Logos can be registered as designs – these ones are owned by Novartis AG
How do you register a design?
To register your design, you will need to:
Figure 2 Spin Master is currently relying on its CRD to stop a rival product
Once the application has been submitted it will be reviewed by the relevant IP office. Registered design applications are not usually subject to a lengthy examination process. However, this can vary by territory and if registering across multiple jurisdictions it is worth identifying the likely length of the process first to avoid invalidating your rights elsewhere in the world based on an earlier filing.
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 (i.e. new and having individual character).
In the UK, the examination process is a little more involved. The design will be examined for novelty and individual character and designs which are dictated by technical function will be refused. If an objection is raised, the applicant has two months to respond.
Figure 3 The famous Valentino V is registered as a CRD in the form it is used on shoes
The examination period in the UK is two weeks. If there are no objections the design will be registered immediately. If there are any objections, you have two months to respond.
The timeframe is even shorter for EU registered designs which can be registered in as little as two days from the date of the application.
If your application is successful, your design will be added to the design registers which are available to the public. You can choose for it not to be made public by deferring your registration for up to 12 months. A deferred registration will be registered from the date you filed the application. However, you will not get the full protection until the registration is published. If you do not register the design within this time it will be cancelled.
What happens if you do not register a design?
Many businesses can rely on unregistered rights such as UK and EU unregistered design rights. These unregistered rights differ in scope and duration of protection.
Although these rights arise automatically, unlike registered designs, you need to prove that there has been unauthorised copying of your design. This can lead to costly and time consuming court proceedings.
Trade marks vs design rights
Logos are commonly considered for protection as registered trade marks and, to a lesser extent, by copyright. However, many do not realise that they can also be registered as a design right.
If you have logo which is not sufficiently distinctive to be registered as a trade mark (without building up considerable goodwill and reputation in the mark as used), you could still register it as a design. A design registration can also be used in addition to trade mark registration to offer dual protection. Because the test for design registration (same overall impression) is different to the main test for trade mark infringement (confusing similarity), a registered design can offer useful additional protection.
The table below compares the scope of rights afforded by trade marks and registered design rights.
|Trade Mark||EU & UK Registered Design|
|Scope||Protects brand names, logos which are distinctive i.e. they act as a “badge of origin” capable of distinguishing the goods.||Protection of the whole or part of a product.
Protects 2D/ 3D designs including shape, appearance, decoration and texture e.g. clothing, shoes, logos, packaging, typefaces.
Does not protect internal components or parts solely dictated by technical function.
Must be “new” gives a different overall impression to earlier designs.
|Right||Monopoly to use the shape mark as a trade mark but only in relation to the goods or services registered.||Monopoly which prevents others from making, using, selling the same design or one with the same “overall impression” in relation to any product.|
|Duration||Indefinite provided trade mark renewed every 10 years from date of filing.||Up to 25 years (if renew every 5 years).|
Until at least March 2019, the UK will remain a Member State of the EU and so Community designs (both registered and unregistered) will continue to give protection in the UK for that period.
The post-Brexit position is still somewhat uncertain. The European Commission’s position paper on Brexit and IP rights proposes that Community registered designs should automatically be recognised in the UK after Brexit. This position mirrors that adopted by many IP organisations in the UK. Even in these circumstances, features such as pan EU injunctions are unlikely to cover the UK so owners of EU registered designs will likely have to initiate two sets of proceedings.
As both the Community and UK registered design rights mirror each other, businesses which wish to protect new designs via the registered route can either (a) apply in the EU now and wait for (we hope) a conversion process to UK design rights or (b) apply in the EU and UK concurrently (which may result in a temporary duplication of rights). We recommend at this stage that businesses opt for (b) as the form the conversion process will take and whether it will involve a further cost, examination process, or a specific opt-in process is uncertain. However, this step can only be taken in relation to new designs as it is not possible to re-file now for UK designs which have previously been registered as Community designs.
Brexit will have a bigger impact on unregistered designs as UK unregistered design right is different in scope and duration from Community unregistered design right. For example, the protection afforded by Community design rights in relation to surface decoration or patterns will no longer apply in the UK unless an application for a Community or UK registered design is made within the one year grace period.
Top tips for registering designs
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