Unregistered design right provides a useful form of protection given that it subsists automatically providing the relevant requirements are fulfilled. However due to the lack of formal registration, in practice exerting such rights can be complicated. Unregistered designs are also relatively limited in time scale as the length of protection offered is only 10 years from the end of the calendar year in which the design was first commercially exploited, i.e. items made to that design are offered for sale or hire.
In addition to this ‘any person is entitled as of right to a licence’ in the last five years i.e. should someone apply for a licence within the last 5 years of the period of protection it cannot be refused.
Consequently registered designs rights is also an area which is worth considering in order to complement and secure design rights. It is a relatively cost effective process, which can prove to be an important first step in establishing and enforcing ownership of a design.
Registered Designs protect ‘the appearance of the whole or a part of a product’. This includes, in particular ‘the lines, contours, colours, shape, texture or materials of the product or its ornamentation’.
In order to qualify for registration the design must satisfy two main criteria:
(1) It must be new: This means that there must be no existing identical or similar design which only differs in immaterial details.
(2) It must have individual character: It should give a different overall impression to informed users than any other design which has previously been made available to the public.
As part of the above the design must not have been disclosed to the public prior to application i.e. shown at an exhibition or offered for sale. There is a 12 month grace period prior to application in respect of this to enable testing and to gauge potential interest in the product. However the design will not be protected against infringement during this period. Therefore it is safer to apply for registration as soon as possible.
To qualify for registration the design as applied to the product must be visible during normal use of the item and must not be dictated solely by its function. When an application is made to either the UK Intellectual Property Office or the European Designs Registry (OHIM) no substantive examination is carried out under any of the above grounds. This is because due the number of designs published, but not necessarily registered, in any particular market, it would simply not be possible for either office to conduct a definitive search, without greatly increasing the associated costs which would make the system much less accessible. As a result it is technically possible for the validity of the design to be challenged at any point following registration. Such an eventuality can be protected against to some extent by following the above requirements as closely as possible and maintaining a record of the development of the design, the date it was first published together with the certificate when issued.
Nevertheless the registered design system still provides a valuable form of protection. For example registration is not limited to the item to which the design is applied to in the application. The fact that a design is registered puts the public on notice of the value invested in the design and the intention to enforce the rights inherent in this. In some cases this may be enough to deter any potential infringers. While in others it will at least assist in proving the approximate date of creation for your designs.
In terms of registration there are certain options – UK or European Community. The EC registration covers each of the 27 member states and costs are not increased too drastically.
Registration of a Design gives the owner of the design the exclusive right to use that design as well as any similar design which gives the same overall impression to an informed user.
‘Use’ 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’.
If anyone other than the owner does any of the above acts without permission this will constitute infringement. The maximum duration of protection offered for registered designs is 25 years, although a renewal fee, which increases with each successive renewal, must be paid every 5 years.