More on Designs
What is a design?
Design means the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, tecture or materials of the product or its ornamentation. There is no requirement for eye appeal as such, but component parts of complex products are only eligible for protection if the component part is visible during normal use.
To what products can you apply a design?
The product to which a design may be applied or in which it may be incorporated includes just about anything, since it is defined as any industrial or handicraft item and includes packaging, get-up and graphic symbols, for example, as well as component parts intended to be assembled into a complex product. The introduction of 'get-up' and 'graphic symbols' will increase the overlap with trade marks since graphic symbols will extend to new logo trade marks.
Why protect design?
A substantial part of the goodwill enjoyed by a business is frequently associated with the design of the products that it creates, its packaging, get-up, and the manner in which the products are presented to the public. Your business is bound to be influenced by the appearance of your products to customers and therefore may depend on your ability to prevent others from mimicking its presentation. Key points to nore are:
- A properly registered design gives the owner a maximum 25-year monopoly on the use of that design.
- A single registered design, particularly one which is directed to ornamentation, can cover a whole range of different products in all of which the design can be incorporated or to which it can be applied. It is the design that is protected, not the product.
- Registration can be obtained quickly without the opportunity for third-party opposition. The advantage is that an enforceable monopoly right can be obtained at an early stage in any marketing strategy.
- Once you have a registered design, products incorporating that design can only be made by you or with your consent.
- A registered design establishes ownership ofthe design as part of the goodwill of your business.
- Registering your design provides certainty as to your rights in the design and your rights to exploit it. Your registereed design is an asset like any other asset of the business and should be preserved and protected with the assistance of professional expert help. Members of ITMA can guide you through the complexities of registered designs and can identify the most appropriate strategy for registration.
What are the essential criteria for registration?
Registered design is granted if your design is new and has individual character over previous designs. Your own ealier disclosures are relevant, but an application for design will not be invalidated by your own prior disclosure of the design in teh 12 months immediately preceding the filing of the application, allowing you to test-market a product before filing, if desired. The design must be either two-dimensional or three-dimensional. Subject to the 12-month grace period mentioned above, a registered design is not valid if:
- the appearance of the deisn is already knwn to persons carrying on business in the European Economic Area and specialising in the sector concerned;
- the overall impression that the design produces on the informed user does not differ from the overall impression produced on such a user by any design which has been made avaiilable to the public. It is also not valid if:
- the shape of the product to which the design is to be applied froms the design signs and that shape is dictated solely by the function that it performs;
- the essential feature of the design is that it "must fit" other components.
Why file for registered design protection early?
Although an application for a UK registered design is not invalidated by your own disclosures in the 12 months preceding filing, that proviso does not extend to disclosures of other designs independent of your own. Also, there may not be a grace period in some other countries, so consult your attorney before disclosing anything. Accordingly, it is prudent to file an application at the earliest opportunity.
Are there other forms of protection?
Copyright or unregistered deisgn rights for which no registration is required may be available. However, the owner of a design registration is presumed to own the design and that the design is original. With copyright and unregistered design, infringement action demands proof of copying. Coincidence or independent creation is a defence to copyright or unregistered design right infringement but not to a claim to infringement or a registered design. Ideas, processes and inventions are not covered by registered design. Registered design protects the appearance of a product and is best used as part of a comprehensive shceme of protection. This may include the use of trade mark registrations, copyright and patents. The professional advice available from members of ITMA will assist in creating a stratefy for using registered design as part of a shield that protexts your goodwill and creative potential.
How much will it cost?
The cost of registering a design is typically less that £1,000 and is made up of:
- fixed fees payable to the Designs Registry;
- professional fees charged by your attorney. These will vary depending on the complexity of the particular matter.
What is happening in Europe?
The Community Regulation establishing a single design registration for the whole of Europe was adopted at the end of 2001. A "Community Design" provides a two-tier system of Community Design protection:
- an unregistered Community design providing short-term protection of three years, which is infringed by copying and;
- a registered Community design providing long-term monopoly protection for a maximum of 25 years.
Where can I get help?
If you are thinking of launching a new breand or product, you should consider consulting a member of The Institute of Trade Mark Attorneys, who will guide you through the complexities of registered design and identify the most appropriate strategy for registration. There is now considerable overlap between trade marks and registered designs, and often both forms of protection should be considered. Employing a member of the Institute will provide you with someone who possesses specialised knowledge and experience and access to an extensive network of international associations to guide you through the different rules and regulations world-wide.
This briefing paper is intended as guidance only and no legal liability can be accepted in relation to the information given.
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