Registered design rights

Contents

Registered design rights

Two different forms of design rights exist: registered design rights and unregistered design rights. The registered design system is for the visual appearance of designs.

Main elements

A protected design can be of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation. This can include packaging, get-up, graphic symbols and typographic typefaces. A 3D design, such as an article, can be protected as well as a 2D design, such as a surface pattern, character images, logos or software icons. There is no requirement for the design to have any artistic merit, and the design can be a sculpture or handicraft item.

Parts of a product are protectable, provided they can be viewed by the end user when in normal use, are parts which are replaceable and intended to be assembled and disassembled, and are in themselves new and have individual character.

The design must be new. An identical design (or a design differing in immaterial details only) must not have been disclosed to the public anywhere in the world prior to the relevant date (which will usually be the date of application for registration).

The design must have individual character. This means that it must give a different overall impression from earlier designs to the 'informed user', who may not be a design expert but is a person who is familiar with the products in the field.

In assessing individual character, the degree of freedom in creating the design will be taken into account. For example, a functional item will have considerably less potential for creative endeavour than a decorative item, so that fewer differences from pre-existing designs are likely to be required for a functional design to qualify as having individual character.

Features of a product that are dictated by its function will be disregarded in assessing whether a product has individual character. Specifically, 'must-fit' items are excluded from protection, although the shape of a connection may be protectable in its own right.

Grace period

A designer who discloses their design has a 12-month period in which to apply for its registration. This grace period gives the designer time to exhibit and market their design before deciding whether it is sufficiently commercial to justify the expense of registration, or to raise funding on the back of a demonstrably successful product.

However, if during the 12-month period a third party makes a same or a similar unconnected disclosure before the designer has applied for registration of their design, the designer's application may be refused. This risk may be avoided by making an application for registration as soon as possible after disclosure of the design.

Exclusions

A design will not be registrable if specific exclusions apply. The most important of these are:

  • Computer programs.
  • Features of a product which are dictated by their technical function or which are necessary in order for the product or a product which is placed next to it to perform its function - the so-called 'must fit' exemption. However, a modular system of mutually interchangeable products, such as modular furniture or LEGO bricks, can be registered.
  • Designs contrary to public policy or accepted principles of morality.
  • Royal arms, or, without consent, a representation of the Royal Family.
  • UK national flags, if the use would be misleading or grossly offensive.
  • Coats of arms, national flags, official signs or hallmarks, or controlled symbols such as the Olympic Symbol, without consent.

Grounds for invalidity

The registration of a design may be declared invalid on the application of a third party, on a number of grounds, including the following:

  • The design does not qualify as a design.
  • The design does not fulfil the requirements of novelty or individual character, is a design dictated by function or is contrary to public policy or morality.
  • The design constitutes an infringement of a third party's copyright or trade mark, or amounts to passing off.

Duration

A registered design can last for 25 years from the date of registration subject to the payment of the 5-yearly renewal fees. The date of registration is usually the application date.

Infringement

Infringement of a registered design occurs when a person does anything which infringes the registered proprietor's exclusive right to use the design, or any design which does not produce a different impression on the informed user (taking into account the degree of freedom of the author in making their design).

Therefore, infringement is not limited to the exact design, but also applies to similar designs, and is not limited to the original article. For example, a design originally produced on crockery could be infringed if reproduced on curtains. Infringing acts include making, offering, putting on the market, importing, exporting, stocking or using the product without the consent of the owner.

A number of acts are specifically allowed in relation to registered designs and therefore do not constitute infringement:

  • An act which is done privately and for non-commercial purposes.
  • An act which is done for experimental purposes.
  • An act of reproduction for teaching purposes, provided the reproduction is fair, does not unduly prejudice the normal exploitation of the design and mention is made of the source.
  • If the product has been put on the market in the European Economic Area by or with the consent of the owner.
  • Repairing a complex product to its original appearance by replacing a component part.
  • Acts committed before the grant of the registration certificate.

Remedies

Both the registered proprietor and an exclusive licensee may bring proceedings for infringement of a registered design.

An action may be brought for one or more of the following:

  • Damages or (as an alternative to damages) an account of the profits made by the defendant.
  • An injunction preventing further infringement.
  • An order for the delivery up or destruction of the infringing articles

Design rights and copyright

Registered design rights and unregistered design rights may co-exist; infringement actions may be taken in respect of either or both rights.

Registered design rights and copyright may co-exist; infringement actions may be taken in respect of either or both rights.