Basic Guide to Registered Designs
Written by Christina King on 13 July 2007« Return to Reading Room
Your brand is arguably your most valuable asset. The availability of design registration is extensive as it is potentially available for any design applied to or incorporated in a product.
This therefore includes anything from sculptures to garments, jewellery and handicrafts, and mechanical/engineering items. It can cover not only products in the traditional sense but also for example logos and even the appearance of screen displays including web pages.
· Unlike Patents it is possible for a design to be disclosed prior to registration provided registration is applied for within 12 months of such disclosure. This is to allow the design to be tested in the market, (although the design will only be protected on the basis of
unregistered rights during this period.)
· Unlike Trade Mark registration it is not limited to the specified category of goods.
· It is a cost effective form of protection. Registration Fees are £60 and £35 for textiles.
· A UK application will take only 3-4 months.
What does it protect?
It protects “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:
· 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:
It should give a different overall impression to informed users than any other design which has previously been made available to the public.
These will both be defeated if the design has been disclosed, for example by way of exhibition or offering for sale, more than 12 months prior to application.
Further grounds for refusal include the requirements that the design must not be dictated solely by its function and the design as applied to the product must be visible during normal use of the item.
Rights granted by Registration
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.
‘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.
Duration of right
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.
In terms of gaining protection within the UK it is possible to register at both the UK level and European level.
Registration at the UK Patent Office is the quicker and cheaper form of registration. It also allows greater flexibility as to the number of views of the design for which protection is sought which can be submitted. However it only provides protection against infringement within the UK. Therefore you will not be protected against any infringements which may occur outside the UK.
Registration at the Office for Harmonisation in the Internal Market (OHIM) will provide protection for the design in all 25 Member States. It is possible to include multiple designs within one application provided they are all for the same type of goods; for example luggage.
If you wish to use your UK design registration as a springboard to other countries you will need to produce your Convention Documents and file the same within 3 months of the filing of the UK application.
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