Registered Designs - what you should know before you apply
Written by Corinne Day on 17 November 2009« Return to Reading Room
The two main criteria that a design must pass in order to qualify for registration are that it must be new and have individual character. 'New' in this sense means that there must be no existing identical design or a similar design which only differs in immaterial details. 'Individual character' 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. However the design will not be protected against infringement during this period. Therefore it is safer to apply for registration as soon as possible.
In order to ascertain whether your design satisfies these requirements you should consider how you created the design, were you influenced by an existing work or have you seen anything similar else where. Provided you are fairly satisfied that the design is your own independent creation you should then consider when exactly the design was revealed to any third parties in order to check that it is within the grace period.
In terms of the application, neither the UK Intellectual Property Office or the European Design Registry, the Office for Harmonisation in the Internal Market (OHIM) will conduct any in depth search in respect of the 'new' requirement. This is because due the number of designs published, but not necessarily registered, in any particular market, it would simply not be possible for it to conduct a definitive search. As a result it is technically possible for the validity of the design to be challenged at any point following registration.
While this should be noted, it does not generally detract from the overall value of this type of protection as the existence of a registered right embodying your design is of course still of benefit. The fact that a design is registered puts the public on notice of the value invested in the design and the intention to enforce the rights inherent in this. In some cases this may be enough to deter any potential infringers. Furthermore 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.
The 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.
It is possible to include multiple designs within one application provided all the designs relate to the same type of goods.
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