Registering a Design can provide a cost-effective way of achieving protection for the creator, and registration will give protection for the ‘overall impression’ of the article or product.
There are some requirements before a Design can be registered:
1. the Design must be new – it must not be identical or substantially similar to an existing Design.
2. It has individual character – it gives a different overall impression to users, compared to any other existing designs already available.
3. It has not been disclosed prior to the application – it has not already been available to the public. There is, however, a 12 month grace period that runs prior to the application filing date, which allows testing of products.
A Design registration application can be made to either the UK Intellectual Property Office or the European Designs Registry (OHIM). The advantage of the latter is that it provides protection across all 27 member states of the EU.
Unlike trade mark and patent applications, no substantive examination is carried out under any of the requirement grounds. This is due to the number of designs published across differing market are substantial, making it impossible for either the Registry office to conduct a detailed and definitive search, without greatly increasing the application time and associated costs. Higher costs could also put off individuals and organisations from registering their potential design rights.
Once registered, the period of protection is 25 years. However, a renewal fee is payable every five years and the fee increases at every renewal stage.
Even where a Design has been successfully registered, it is worth bearing in mind that there remains the possibility for the design to be challenged by another right holder. One way to reduce the possibility of this happening is by ensuring that the requirements (listed above) are followed as closely as possible. It will also help if the applicant maintains a written and/or photographic record in the development of the design, the date it was first published together with the registration certificate when issued. These could become useful in fighting any potential challenges.