Many see Intellectual Property as a dry subject but that couldn’t be further from the truth. Intellectual Property protection is all about protecting creativity. Millennials and Gen Z are some of the most creative generations we’ve seen, between this and the new age of social media, it is more important than ever to ensure that any Intellectual Property (IP) created is protected.
With social and Ecommerce your products and services can be seen and sold globally within a matter of minutes. As a result, those able and likely to copy your ideas have multiplied immensely.
Registered design is one of the tools used to protect Intellectual Property (IP) that has been created. This is the design version of a trade mark. The equivalent of a design trade mark but termed registered design or sometimes design mark.
What can be protected through Registered Design?
A registered design protects the shape, configuration, pattern or ornamentation of a product – that is whatever gives a product it’s unique appearance. Essentially, the design of a product relates to its appearance, rather than to technical principles of its construction or operation.
The unique appearance protected can be the whole product or can form part of the product. It could even be the inside of a product that has the protection over it through registration. The design could be a two-dimensional image such as a logo, pattern or icon. Alternatively, it could be a three-dimensional physical object.
The appearance of a product can include:
- Lines and contours
- Patterns and colours
- Packaging designs
- Typographic features and
- Graphic symbols within
The design which is the subject of an application for registration must meet two criteria, it must:
- be novel; and
- possess individual character.
These are decided with reference to designs which have been made available to the public before the effective filing date of the application. Designs may be made available by publication, use or any other means.
This highlights the importance of protecting your design sooner rather than later.
If you want to patent your product, applying for a registered design MUST be done AFTER the patent has been applied for.
The Intellectual Property Office UK gives the following definition: “A registered design is a monopoly right for the appearance of the whole or part of a product resulting from the features of, in particular, the lines contours, shape, texture, materials of the product or its ornamentation”.
What does registering a design do?
A registered design protects the shape or appearance of a product. It gives its owner the exclusive right to the design of that product, and it can be used to deter others from copying it, or stop them from continuing to do so, without the consent of the owner.
This means that once a design is registered at the Intellectual Property Office (IPO), the owner has exclusive right in the United Kingdom to make, use, sell, import and export any product embodying the design. These rights also extend to similar designs which do not produce a substantially different impression on the user. So, it is not just an identical copy of a design that the owner is protected from here.
The owner of the registered design can take action against anyone using the same or similar design, regardless of whether the design was in fact copied or created independently without being copied.
Design rights are often overlooked by business owners who are seeking to protect their intellectual investments in new products or new technologies.
Businesses are beginning to recognise the benefit of incorporating design right protection into their broader portfolio of intellectual property rights. Design rights sit alongside trade marks, providing a different level of protection and, crucially, a different means of enforcement. For example, if a word is registered as a trade mark and that mark also has a stylistic element, the stylistic element can be registered as a design.
Length of registered design
If granted, the registration can last 25 years, but to do so it must be renewed at five-yearly intervals and there is a payment required at each renewal.
A design registration cannot protect features of a design which are entirely dictated by the product’s function.
You cannot register designs which incorporate protected emblems which include, for example, the Olympic symbols, Royal arms and national flags. Nor is it allowable to incorporate third parties’ trade marks or copyright material into a design to be registered.
The biggest restriction with designs is that in the UK and EU the design needs to be registered within 12 months of the first disclosure. Often, we find that business owners wish to register their design once it has been on the market a while, they’ve made some money from it, and they are more confident that it is going to do well and therefore wish to protect it. If this is the case your application will be more vulnerable and can result in your design right being cancelled leaving you with unregistered design rights only.
Unregistered design rights
In the UK these only last 10 years from first sale and after the first 5 years you need to give anyone who wants one a license to use them. Within the EU they expire after 3 years. This often means that the ability to monetise on your unique design is gone.
Additionally, if someone does create a similar design it is far more difficult to attempt to prove yours was designed earlier without the formal registration taking place. The burden of proof is on you to prove whoever copied your design, did actually copy it. With a registered design you have exclusive rights to that design and makes it much easier to stop others infringing on it.
The only way to keep the exclusive use of your design is to register it.
The application process
A design, like a trade mark, needs to be registered in each jurisdiction you want to protect it in.
The UK Intellectual Property Office (IPO) will handle your application. To register across the whole EU, you can apply for a registered design at the EUIPO.
We can deal with all aspects of the initial searches, filing an application and obtaining a registration of a design on your behalf. We also offer watching searches to ensure that no third party is attempting to register a design that is too similar to your registered design.
Filing an application
To enable us to prepare the documents for filing an application, we need drawings or photographs showing all features of the design.
The filing of a design application in the United Kingdom generates a “priority date” which can be claimed to support corresponding design applications filed abroad within six months of the UK filing date.
It is also possible for a UK registered design application to claim priority from an overseas filing.
Trade mark v Registered Design
As already outlined registered design works well alongside trade marks but there are some advantages to note of having a design registered either instead of or as well as a trade mark. Of particular not are the following:
- The use of the design is not tied to any class of goods
- It can be quick to register
- There is no lengthy review by the design registry
- Continuous usage of the design is not necessary
Adding a design registration is likely to give your business a competitive edge by making it more distinctive and attractive to customers. A design adds an additional layer to a business’ brand making it instantly recognisable.
A logo is often registered as a trade mark but it is likely to be able to be registered as a registered design also. Sometimes a logo is not sufficiently distinctive to be able to be registered as a trade mark, it may still be possible to register it as a design.
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 therefore offer useful additional protection.
Financial positives of registering a design
Protecting your design by registering it with the IPO has the benefit of strengthening your brand and ensuring you alone have exclusive right to it. This can help you financially as no other businesses are able to use your design and therefore gives you an opportunity to monopolise the market. There are other additional beneficial financial reasons to register that design:
- Licensing design rights can provide a valuable income stream
- Designs can be used as a way of raising capital, for example, as security for a loan.
- The rights to exploit a design can be sold.
- If you’re looking to sell your business, having the protection of design registration will increase your business’ value
- A reputation for innovative product design can add significant value to your business.
- Designs can transform a product into a brand and increase and consolidate market share.
If you’re looking to register a design that you have, or would like to discuss your options and business’ Intellectual Property generally please email us at email@example.com or book in with our IP Manager Mitch on https://calendly.com/mitch-183.
Written by Michaela Cusack, Director at NBRG