Design Registration FAQ
22 Aug 2016
What is Design Registration?
Consumers buy goods for all sorts of reason. Some because of the reputation of the supplier. Some because of their technical features. And some because of the way a product looks. The reputation of a supplier (that is to say, its brand) is protected by trade mark registration and the law of passing off. Technology can sometimes be protected by patents. unregistered design right or the law of confidence. The look of a product (that is to say, its appearance or design) can be protected by registration either with the Designs Registry of the Intellectual Property Office ("IPO") for the UK alone as a registered design or with the European Union Intellectual Property Office ("EUIPO") for the whole EU including the UK as a registered Community design ("RCD").
What is meant by "Design" for the Purpose of Design Registration?
As I said in Design 7 Aug 2016 the word connotes two concepts in everyday language, namely technical function and appearance. Design registration protects the appearance of a product as opposed to its function. A design for the purpose of design registration is defined as:
"the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation".
That begs the question, "What is a product" to which the answer is defined as
"any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs."
That definition is very broad for it covers 2 as well as 3-dimensional objects which could include logos that might not be registrable as trade marks. Thus, design registration has a role in branding and marketing as well as manufacturing.
Which Designs can be protected?
Any design can be protected as a registered design or as an RCD so long as it is new, has individual character and falls outside the below-mentioned exclusions such as royal or national emblems or Olympic symbols.
A design is new if no identical design was made available to the public before the application to register the design. If an application is based on an earlier application in some other country or group of countries, the design is considered to be new if no identical design was made available to the public before that earlier application. Designs shall be considered to be identical if their features differ only in immaterial details. There is incidentally a 12 month grace period after a design is first made available to the public within which the application must be made.
A design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the application for registration. If the application is based on an earlier application elsewhere the design has individual character if the overall impression on the informed user produced by the earlier design differs from the overall impression produced on such a user by any design that had been made available before that earlier application. In assessing individual character, the degree of freedom of the designer in developing the design is taken into consideration.
Features of appearance of a product which are solely dictated by its technical function are not protected. Neither are features of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function. Nor can designs that are contrary to public policy such as royal and national emblems and Olympic symbols or those that are contrary to accepted principles of morality.
Registering a design with the IPO or EUIPO is very much cheaper and easier than applying for a patent or even a trade mark as there is no substantive examination and no procedure for opposing an application. There is useful guidance on both the IPO and EUIPO websites. Applications can be made online or by post to both the IPO and the EUIPO.
The procedure for applying to the IPO is set out in set out in Register a Design on the IPO website. The procedure for applying to the EUIPO is set out in the Route to Registration section of the EUIPO website. The fee for registering a design with the IPO is £60. The fee for registering an RCD starts at €350.
How can I challenge a Design Registration?
Because there is no procedure for publishing design registration applications (unlike patents and trade marks), you are unlikely to hear of an application until after it has been granted. If you object to a registration you must either persuade the proprietor to apply for cancellation of his or her own registration or apply for the registration to be declared invalid on the grounds that the design was not new, lacked individual character or fell into one or more of the above-mentioned exclusions.
Guidance on challenging registered designs is provided by the Objecting to other people's designs page of the IPO website.
There is similar guidance in respect of RCD on the Disputes page of the EUIPO website.
Can Design Registrations be bought and sold?
Yes. Registered designs and RCD can be assigned and licensed just like any other IP right. Particulars of assignments, charges, exclusive licences and transfers of title upon death, insolvency or otherwise should be noted on the IPO or, as the case may be, EUIPO register.
How can a Registered Design or RCD be infringed?
The registration of a design gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression. "Use" for these purposes includes "making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied" or "stocking such a product for those purposes." Subject to a number of exception, a design registration is infringed by doing any of those acts without the licence of the registered proprietor.
What happens if a Registered Design or RCD is infringed?
If an infringement takes place in England and Wales an action for an injunction (an order by a judge to do or refrain from doing an act on pain of punishment for disobedience). damages (compensation) or account of profits (calculation and surrender of ill-gotten gains), a contribution to the claimant's legal fees and other costs and further or other relief can be brought in the Patents Court (specialist judges of the Chancery Division of the High Court) or the Intellectual Property Enterprise Court ("IPEC") multitrack. A claim for registered design or RCD infringement cannot be brought in IPEC's small claims track, the County Court or before anywhere else in the High Court.
The Patents Court and IPEC have jurisdiction throughout the EU in respect of RCD as Community design courts.
It is now an offence to make a product exactly to a registered design or RCD (or differing from it only in immaterial details) in the knowledge or having reason to believe that the design has been registered.
What is an Unregistered Community Design?
This is a new EU wide IP right created by the Community Design Regulation (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ EC No L 3 of 5.1.2002, p. 1)) largely for the fashion, toy, novelties and other industries whose products have a short shelf life. Any design that could be registered as a registered design or RCD is automatically protected for 3 years against any of the acts that would infringe a registered design or RCD if such acts resulted from copying. It is quite a different concept from unregistered design right in English law.
Where can I look up the Law?
The basic legislation in relation to registered designs is the Registered Designs Act 1949. That Act has been amended extensively over the years and a useful but unofficial consolidation appears on the IPO website. The Act is implemented by the Registered Designs Rules 2006.
The Act was amended to give effect to the Designs Directive (Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (OJ L 289 , 28.10.1998 P 28) which harmonizes the design laws of the EU member states. It is necessary from time to time to consult the Directive and the decisions of the Court of Justice of the European Union ("CJEU") on its meaning to interpret and apply the Act.
The basic legislation on RCD and unregistered Community designs is the Community Design Regulation mentioned above.
Transcripts of decisions of the CJEU, the Patents Court and IPEC on registered designs cases are to be found on the British and Irish Legal Information Institute website. Decisions of IPO hearing officers on registered design cases can be found on the Designs Decision page of the IPO website.
The main practitioner's textbook on registered designs and RCD is Russell Clarke & Howe on Industrial Designs (9th edition) Sept 2016).
I give talks on design registration which are aimed at designers and entrepreneurs rather than lawyers or patent and trade mark attorneys from time to time as do the British Library Business and IP Centre and its associated libraries around the country.
If you want to discuss this article or any question on design law get in touch through my contact form on +44 (0)20 7404 5252 during office hours.