What is a registered design?
A registered design provides a legal monopoly in a novel design. It gives the owner of the registration the right to stop others exploiting the design for a limited period. This is
25 years in the UK subject to renewal every 5 years. The registration protects the appearance of the whole or part of a product. The law has recently been changed to allow a wider range of designs to be registered.
What designs can be registered?
For a design to be registrable in the UK it must be new, that is to say, it must not have been previously disclosed anywhere in the world, subject to certain exceptions. In particular, any disclosures which are made by the designer in the 12 months immediately before making an application for registration are disregarded. The design must also possess "individual character", meaning that the overall impression the design creates on the informed user must be different to that of previously disclosed designs. A UK design registration protects the appearance of a product when it results from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation. For instance, a new design of knife, tea cup, jumper, telephone, lamp or desk could all be suitable for registered design protection. In addition, designs for packaging, get-up, graphic symbols and typefaces can also be registered.
Designs dictated solely by function are unregistrable and where the novel aspects of a design lie in features of function, patent protection should be considered. Furthermore, features of appearance which must be exactly reproduced to enable the product to be attached or fitted to some other product to allow either product to perform its function, cannot be registered.
How is a UK registered design obtained?
A design is registered by filing an application in the Designs Registry, which is a part of the Patent Office. The application must include drawings, photographs or specimens of the design to be registered. The Designs Registry will examine the design to make sure that it meets the basic requirements for registration, although a novelty search for any similar existing registrations is no longer carried out.
How are overseas registered designs obtained?
A design registration is territorially limited and, if protection is required in several countries, separate applications must be filed in each country. However, in Europe it is possible to file a single Community application to seek registered design protection in all European Community countries.
How are registered designs enforced?
This can vary from country to country, but generally registered designs are enforced through the courts. The courts are usually empowered to grant an injunction to stop infringing acts and are usually also empowered to award damages for past infringement.
Why are registered designs important?
Registration of designs is particularly appropriate for products where the design of the product distinguishes the product from those of competitors and a premium can be charged for good design. Examples include vehicles, watches, jewellery and furniture.
A premium can be charged whilst exclusivity is maintained - a UK design registration provides up to 25 years of exclusivity. However, independent designers or design houses have design ideas that they themselves cannot manufacture, registered designs can give a basis for licensing or for the sale of a design.
How can registered designs be used commercially?
Registered designs can be used in three different ways.
- Registered designs can be used to prevent others trading in articles of identical or similar design. The applicant can obtain a period of exclusivity which enables a premium to be charged for the article.
- Registered designs can provide the legal framework for the licensing of designs and the proprietor of a registration can earn income from royalty payments.
- Registered designs can be traded as an asset and can be used as security in raising a loan.
How can a Patent Attorney help?
A patent attorney can provide initial advice on whether a design is registerable and then manage the registration of a design in the UK, the rest of Europe and worldwide. Following the grant of a design registration, a patent attorney can deal with the management and maintenance of registered design rights, arranging the payment of renewal fees when due. Patent attorneys can also advise on the licensing, assignment and enforcement of registered designs and the revocation of existing invalid registered design rights.
What can Boult Wade Tennant offer?
Boult Wade Tennant specialises in intellectual property law and has a team of attorneys experienced in registered designs. In dealing with enforcement of rights, it is sometimes necessary to act very quickly and we have the flexibility to place a number of people at the disposal of a client immediately, should speedy action be required.
The firm has offices in London, Reading, Oxford and Cambridge. Our Head office is close to the London filing office of the UK Designs Registry, so all documents relating to applications for registered designs can be filed by hand. This allows safe delivery and ensures that important deadlines are not missed.
We have the advantage of having an in-house Technical Illustration Department which can prepare any representations needed for registered designs. Our Renewals Department handles renewal payments in-house and, in conjunction with our Records Department, can provide clients with up-to-date schedules of their cases.