TIL Login Contact us

Design right

Registered Design Right:

Protects the lines, contours, colours, shape, texture and materials of a product or its ornamentation by registering the design with the Patent Office. This usually applies to aesthetic objects.

Unregistered Design Right:

Design right gives you free automatic protection for the internal or external shape or configuration of an original design. Design right allows you to stop anyone from copying the shape or configuration of the product, but does not give you protection for any of the 2-dimensional aspects, for example patterns.

Introduction

A design in the context of intellectual property (IP) refers to the appearance of the whole, or part, of a product resulting from the features of lines, contours, shape, texture or materials of the product or its ornamentation.  This definition is very broad and can include the appearance of products, logos, graphic symbols, screen displays, typefaces and packaging.  There are three prospective types of intellectual property protection for designs in the UK: registered design right, unregistered design right, and in certain instances copyright.

Registered design right

Registered design right (RDR) protects the shape or ornamentation of a product, or party of a product.  To obtain a registered design in the UK, a formal application has to be filed with the Designs Registry (section of the Patent Office).  RDR provides the owner with a time-limited exclusive legal monopoly to prevent others from making, using, selling, importing and exporting any product incorporating the design.  The right exists irrespective of whether anyone else independently created the design.

The application process

A design application consists of an informative description along with graphic or photographic reproductions of the design.  Details of all the matter for which protection is sought should be distinguished and a maximum of 7 different views of the design is permitted.  The design application undergoes a limited examination process at the Patent Office and subsequent publication and grant in the design registry can occur within weeks of filing.

Initial filing of a UK design application generates a priority date for the design.  The owner then has a 6 month period to file applications abroad claiming the priority date of the original application.

Community registered design (EU)

The requirements and rights afforded by Community registered design right are the same as already described for UK registered designs.  The only difference is that Community rights extend to the whole European Union.  One added advantage of this application route is that multiple design applications can be filed at the same time.  The more applications filed, the cheaper the cost.

Duration and costs

Registered design right, both UK and EU, can last for a maximum duration of 25 years.  To reach this maximum duration, renewal fees must be paid at five-yearly intervals.  The costs of design application depends upon the number of designs being applied for and the territories in which registration is required.  A single application with a single design will normally cost about £600.  An application with five designs will cost about £1500, added to this will be renewal fees.

RDR requirements for protection

For RDR to be granted, the design must be:

  • New:  No identical designs disclosed publicly before application filing.
  • Individual in character:  Overall impression of the design is different to any other previously disclosed.
  • Not excluded:  Exclusions include features dictated solely by their technical function e.g. design of an electric razor head; and features which have to be in contact with another feature in order to perform its function.

Unregistered design right

In the UK, unregistered design right (UDR) is an automatically arising IP right.  UDR specifically protects the aspects of shape or configuration (internal or external) of the whole, or part, of a marketable product.  The rights afforded by unregistered design right allow the owner to prevent unauthorised dealings of the design throughout the UK which include: selling, importing, exporting and possessing infringing articles.  However, these rights do not allow the owner to prevent someone doing any of these actions if they have independently created the very same design i.e. not copied it.

Duration of unregistered design right

UDR lasts for a maximum period of 15 years, from the end of the calendar year in which the design was recorded or an article made.  If the design is commercially marketed within the first 5 years of protection, UDR lasts 10 years from when first sold.

Community unregistered design (EU)

Community unregistered design (UCD) is an automatic right, but only has a duration of 3 years.  The reason for UCD introduction was to provide conformity within the EU, resulting in all members states having minimum automatic design protection.  The UK already had these provisions in place (UDR) and as can be noted the duration of UDR in the UK is much longer than that for UCD.

Copyright and designs

Design rights exist independently of copyright, however copyright may still protect the literary aspect of a design i.e. actual documents detailing the design, as well as any artistic work incorporated into the design.  In this case, copyright would only prevent someone copying the design document and could not prevent someone producing an article to that design.  Design right would not be used to prevent the latter.

Governance of design right

In the UK, UDR is governed by the Copyright, Designs and Patent Act 1988 (CDPA).  RDR is governed by the Registered Designs Act 1949, as amended by the registered Design Regulations 2001.

In the European Community, design rights are governed by EC Directive 98/71/EC and also EC regulation 6/2002 on Community Designs.

Further information

www.intellectual-property.gov.uk  /  www.patent.gov.uk

Grace period

The requirement of a design being new for RDR is not absolute, as in patent law.  Disclosure of a design within 12 months preceding an application will not invalidate the application (this is known as a grace period).  Other countries outside the UK and EU do not have this grace period, so disclosure before filing could result in application failure.

UDR requirements for protection

The design has to be:

  • Original:  Not copied, but created from sufficient skill, judgement and labour (as copyright).
  • Not commonplace:  Not similar to any other design.
  • Not Excluded:  Exclusions include a method or principle of construction; features which have to be in contact with another feature in order to perform its function; and the surface decoration of a product.

Design right factors to be considered

  • The definition of a design is very broad allowing a wide variety of different types of designs to be registered.
  • Products with distinctive appearance are ideal for design right protection.
  • Design right protects appearance rather than the way something works, such as functional or technical characteristics.
  • Copyright is not available for the majority of designs, unless there is a literary or artistic quality to the design.
  • Registered designs provide a time-limited exclusive legal monopoly, allowing the prevention of other people from exploiting an identical or similar product.