Registered Designs – Can my design be registered?
A design is registrable whether it is a whole product or simply part of the product resulting from the features of lines, colours, contours, shape, texture and materials of the product or its ornamentation (Section 1 (2) of the Registered Designs Act) This can include packaging, the get up of a product, graphic symbols and typographic typeface.
Protection is across all sectors, which assist brand owners in trying to protect their trade dress. A design for the purpose of registration does not require any artistic merit and the design can be a sculpture or any other handicraft item.
A part of a product is protectable under registered designs as long as they can be viewed when in normal use. For example, the lid of a pen is protectable as it is able to be viewed by the user during the use of the pen, however the inner workings of a car engine will not be protectable as during the use of the car the bonnet will be closed and the engine cannot be viewed.
For a design to be protectable the design must be new (Section 1B(1) RDA), An identical design or one that differs immaterially must not have been disclosed to the public anywhere in the world prior to the relevant date (Section 1B(2) RDA), there are limited exceptions to this rule however this will not be explored in this article.
The design must have individual character (S1B(1) RDA. This means that the design must give an overall different impression from earlier designs to the “informed user”, who may not be an expert but is a person who is familiar with the products in the field (Section 1B(3) RDA) The test is wider and more complicated than the novelty test.
The main source of clarification in this area is the case of Procter & Gamble v Reckitt Benckiser. The Court of Appeal in its judgement stated that when assessing the individual character, the degree of freedom in creating the design will be taken into account. For example, a functional item will have considerably less potential for creative endeavour than a creative item; therefore the fewer from pre existing designs are likely to be required for a functional design to qualify as having individual character.
Features of a product that are dictated by its function will be disregarded in assessing whether a product has individual character. ‘Must Fit’ items are specifically excluded for protection, although the shape of a connection may be protectable in its own right.
A designer who discloses his design has a 12 month period in which to apply for registration of the design (Section 1B(6)(c) and (d) RDA). This grace period gives the designer time to exhibit and market the design before deciding whether it is sufficiently commercial to justify the expense of registration.
A design will not be registrable if specific exclusions apply. The most important of these are:
- Computer programs
- Features of the product which are dictated by their technical function or which are necessary in order for the product which is placed next to it to perform its function- the ‘must fit’ exemption.
- Designs contrary to public policy or accepted principles of morality
- Royal arms with or without consent, a representation of the royal family.
- UK national flags, if the use would be misleading or grossly offensive
- Costs of arm, national flags, official signs or hallmarks or controlled symbols without consent.
If you believe that you have a design that could be registered or want advice on your design contact Michael Coyle or Thomas Mould at our Southampton Office.