Registered Designs and Novelty – the importance of designs
Judge Colin Birss QC once again provided an excellent judgement in a legal argument concerning registered designs. The case concerned novelty and individual character of a bottle carrier and he found that the registered community design was valid and had been infringed by a rival product. The design in question with number 616057 – 0001 is owned by Gimex International Group Import Export (‘Gimex’). It sued five defendants who were responsible for infringing the bottle carrier by virtue of its bottle holder ‘Chill Bag’. The Defendants’ argued the design lacked the individual character and novelty required for a valid registration. Birss disagreed and found that the design was novel and that an informed user would appreciate its individual character.
The case highlights why registered designs are such a cost effective way of establishing protection for third parties. Essentially a Registered Design protects the ‘overall impression’ of a product. So in this instance it would enable Gimex to prevent any third party from copying the design of your competitors.
In order to qualify for registration the design must satisfy two main criteria:
- It must be new. This means that there must be no existing identical or similar design which only differs in immaterial details.
- It must have individual character. This means that 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.
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.