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. They are also relatively limited in time scale as the length of protection offered is only 10 years from the from the end of the calendar year in which the design was first commercially exploited, i.e. items made to the design are offered for sale or hire. In addition to this Âany person is entitled as of right to a licenceÂ 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 is also an area which is worth considering. It is a relatively cost effective process, which can prove to be an important first step in establishing and enforcing ownership of a design.
Â Protect Âthe appearance of the whole or a part of a productÂ. This includes, in particular Âthe lines, contours, colours, shape, texture or materials of the product or its ornamentation.Â
In order to qualify for registration the design must satisfy two main criteria:
Â· it must be new:
This means that there must be no existing identical or similar design which only differs in immaterial details.
Â Â· It must have individual character:Â
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 isÂ 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.Â
hen an application is made to either the UK Patent Office or the European Designs Registry (OHIM)Â no substantive examination is carried out under any of the above grounds. This is because due theÂ number of designs published, but not necessarily registered, in any particular market, it wouldÂ simply not be possible for either office to conduct a definitive search, without greatlyÂ increasing the associated costs which would make the system much less accessible. As a result itÂ is technically possible for the validity of the design to be challenged at any point followingÂ registration. Such an eventuality can be protected against to some extent by following the aboveÂ requirements as closely as possible and maintaining a record of the development of the design, theÂ date it was first published together with the certificate when issued. Â
Nevertheless the registered design system still provides a valuable form of protection. ForÂ example registration is not limited to the item to which the design is applied to in theÂ application. The fact that a design is registered puts the public on notice of the value invested Â in the design and the intention to enforce the rights inherent in this. In some cases this may beÂ enough to deter any potential infringers. While in others it will at least assist in proving theÂ approximate date of creation for your designs.
In terms of registration there are options – UK or European Community. One of the current advantages of the Community system over the UK is that it allows multiple designs to be submitted within one application, provided the items are of the same type e.g. clothing, with associated filing fees being reduced slightly after the first design. The UK is currently implementing changes to its system so that this method of filing will also be available for UK applications in October 2006.
Registration 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. Â
ÂUseÂ includes Âmaking, offering, putting on the market, importing, exporting or using of aÂ product in which the design is incorporated or to which it is applied or stocking such a productÂ for those purposes.Â
Â If anyone other than the owner does any of the above acts without permission this will constitute infringement.
Â 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.Â