What is a UK design?
A Registered Design is a legal right which protects the overall visual appearance of a product or a part of a product in the country or countries where you register it. The appearance of your product may result from a combination of elements such as shapes, colours and materials.
If your product is likely to derive value or attract customers as a result of the way it looks, you should consider registering the design.
UK Registered Designs are governed by the UK intellectual Property Office (UKIPO) and provide protection for the UK only. Within the UK they can help to prevent competitors from creating and marketing designs which are too similar to your own, and if necessary form the basis of an infringement action against said competitors.
UK Registered Designs can be obtained for three-dimensional products, two-dimensional ornamentation, or a combination of the two (e.g. the shape of a vase with a pattern applied). The term ‘product’ is interpreted quite broadly, and includes packaging, get-up (the overall presentation of products which comprise multiple components but which are sold as one single item, e.g. a board game complete with playing pieces), graphic symbols, typographic typefaces. Protection is also available for component parts of products intended to be assembled into a more complex product, but there are limitations as discussed later.
For its registration to be valid, a design must:
- Be new; and
- Have individual character.
In order for a design to be ‘new’, no identical design can have been published or publicly disclosed anywhere in the world. This includes designs ‘published’ on an Internet website before the date it was filed. In this context ‘identical’ covers designs whose features differ only in immaterial details.
A design has individual character if, in comparison with known designs, it creates a different overall impression on an informed user (a person who is familiar with the kind of product in question). In making the assessment, the degree of freedom available to the designer is taken into account, i.e. the design of a product that must, by its nature, include certain features may require fewer or smaller differences to provide a different overall impression to known designs than a product where there is no such limitation placed on the designer.
Notwithstanding the above, a so-called ‘grace period’ exists allowing applicants to apply to register a design in the UK up to 12 months after the designer first discloses it. This allows an applicant to test the market for a design before committing to the cost of applying to register the design. However, it is still prudent not to delay filing an application for any longer than necessary.
Exclusions and limitations
As mentioned, Registered Designs provide protection for the appearance of a product. They do not separately provide protection for the feel of a texture of a product or for the physical construction of the product. Similarly, they cannot protect the way something works, or the idea or concept behind a product. Indeed, any aspect of a design that is solely dictated by its technical function is expressly excluded from protection, although the aesthetic aspects of a product that just happens to have a technical function may still be protected.
A component part of a ‘complex product’ is separately registerable only if, once incorporated into the complex product:
- It remains visible during normal use (excluding repair or servicing) of the product by an end user; and
- The visible features of the component part fulfil in themselves the requirements as to novelty and individual character.
Protection is also not available for any feature or features of a design that must necessarily be reproduced in their exact form and dimensions to permit the product to be mechanically connected to or placed in, around or against another product so that either product may perform its function. This exclusion is interpreted narrowly, typically requiring a plug and socket or lock and key type of relationship.
The design of a product will also be excluded from registration if:
- It is not a design by legal definition as described above;
- It is offensive; or
- It consists of, or includes, certain protected flags and international emblems.
In order to register your design we will need a set of images/representations that accurately and fully illustrate the product to be registered. Ideally line drawings should be filed, but it is possible to file an application relying on photographic representations. If photographs are used, they should be taken against a clear background and so far as possible be free of highlights, reflections and heavy shadows. Care should also be taken to avoid distortion due to the camera position.
The application should contain enough views/representations to fully define the design that is being registered. For three dimensional designs, front, back, left, right, top and bottom views, and a perspective view, are most appropriate.
We will also require details of the applicant and, if priority is to be claimed from an earlier design registration (within six months of the earlier filing) we will also need details of the earlier filing.
It is possible, and indeed cost effective, to include more than one design in a single application. There is no restriction on the number of designs that can be included, and they need not all be in the same Locarno class (the product classification used for both UK and European Community designs).
Descriptions of the design views can be provided with the application. They are typically not required, but if provided they form a part of the registration.
Applications will not be examined other than for compliance with formal requirements, and will typically be registered within around two months of filing, unless objections are raised. Around three weeks after registration the design will be published, along with the applicant details, in the Registered Designs Journal. Deferred publication can be requested, for up to twelve months, in the event that there is an interest in keeping the registration confidential initially.
A UK Registered Design initially provides protection for 5 years from filing. After this, payment of renewal fees can extend the protection for a further four five-year periods (to a maximum of 25 years).
Scope of protection
The test to determine the scope of protection of a UK Registered Design is essentially the same as outlined above for assessing validity of the design. Therefore, a Registered Design will cover any identical design, or any design which does not produce a different overall impression on an informed user, again taking into consideration the freedom of the designer in creating the design. The question of overall impression is always subjective.
How can AA Thornton help?
If you are interested in discussing any of the above with an attorney, or have any questions, we would be happy to help.
We offer a free ~30 minute initial discussion for new clients with a qualified attorney, during which you would talk through your design in detail and we would discuss with you our thoughts on design protection, outline the procedure to you and when you can expect to incur costs, and offer our advice as to how best you should proceed. We would be happy to arrange such a discussion with you.
In order for you to get the most benefit from a discussion, we recommend that you provide us with as much detail as you can regarding your design in advance.