The way products look is an increasingly important, and potentially valuable, asset for businesses who produce and market goods across a wide range of business sectors. Our attorneys can advise as regards how to use design law to protect the appearance of your products and or graphic symbols, and enforce such rights against potential infringers.
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Our attorneys are expert in all areas of registered and unregistered design law, and can help you develop and execute an effective design strategy to equip your business with what it needs to secure its rights. As well as advising on how your designs may be protected and enforced in the United Kingdom and EU, we can prosecute International Design Applications under the Hague Agreement for you. We also cooperate with a trusted network of overseas attorneys, developed over decades, to help us to help you ensure that your designs can be protected in countries that are commercially important to you.
We can also advise and act for you in contentious proceedings relating to design matters both in the United Kingdom, European Union and elsewhere.
Further, our team of IP Litigators advise on, and bring or defend, design related disputes for you before the English courts.
Alongside filing, prosecuting, defending and enforcing designs, the firm can also assist with the commercial management of your design portfolios, including advising on and preparing licences, sublicences, assignments and other transactions.
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What do we mean by design?
When we talk about design we are referring to the outward appearance of manufactured goods, whether in whole or in part, including colours, shape and texture, as well as any applied decoration or pattern. Designs can also be graphic symbols.
What is a design registration?
A design registration typically protects the design of a product or graphic symbol. So, a registered design can protect the outward appearance of the product in whole or in part, individual design features such as colours, shape or texture, as well as any decoration or pattern which appears on it. Basically, the design registration protects what the product or symbol looks like.
A design registration cannot protect technical or functional aspects of products, that is, how they work. Such functional or technical aspects would be protected by patents as discussed here.
What rights does a design registration provide?
In the UK and EU, a design registration gives its owner exclusive rights in all designs which do not produce a different overall impression from that protected in the registration. That is, the owner of a design registration in respect of a product can prevent others from making, using, dealing in or selling products with the same, or a similar, design.
How is a design registration obtained?
To obtain a design registration, it is necessary to make an application for registration. The application can be filed at a national level (at the United Kingdom Intellectual Property Office (“UKIPO”)) leading to the grant of a UK design registration, and/or on an EU-wide level (at the EU Intellectual Property Office (“EUIPO”) in Alicante) to obtain the grant of a registered Community design. UK design registrations afford protection in the United Kingdom., Registered Community designs afford protection in all of the member states of the European Union.
What are the elements of a design application?
A design application will always include:
- Representations of the design for which protection is sought. Typically this includes photographs and/or drawings from numerous angles, such that all of the elements of the design can be seen.
- Name and address of the applicant.
- Identification of the product to which the design is applied, for example, a car, a cup, a handbag, a seat, a container, a tap etc, or an indication that it is a graphic symbol.
Who can be the applicant for the design registration?
The applicant for the design registration will usually eventually become the owner of the registration. It is important that individuals or companies who are entitled to own the registration should make the application.
Normally, the person who makes the design originally (or their successors in title) will be entitled to own the registration. However, if that person has been commissioned to produce the work, or has created the design during the course of his employment, the situation can be more complicated. In the case of employment, the employer will be entitled to the registration (unless there has been agreement to the contrary), and the application would be made in the name of the individual or company concerned. Where a person has been commissioned for money or money’s worth, the commissioner is no longer entitled to the registration by default, there needs to be agreement to the to this effect.
Can only an individual apply for a design registration?
In the UK and EU, the applicant for a design registration can be an individual, a number of individuals, or a “legal person” such as a company or partnership.
Can I prepare and file a design application myself?
Individuals can file their own design applications, although this is not advisable. Qualified design attorneys are best equipped to handle such applications, as they have greater knowledge of the legal requirements for protection, the potential validity of any application, and suitable representations to be filed such that the design is adequately illustrated in the application.
Can I obtain design protection in other countries?
Registered designs are territorial. A UK design registration has effect only in the UK, and a registered Community design is effective throughout the EU. It is also possible to file applications in other countries, either at their own Intellectual Property Offices, or by filing a single ‘international’ application at the World Intellectual Property Organisation (WIPO) in Geneva. Not all countries are members of the international system, and so it is often necessary to file separate applications in certain countries.
If you are interested in design protection in a number of countries, Beck Greener can advise on an appropriate strategy for protecting your design in the jurisdictions of interest.
How long does a design registration last?
In most countries around the world, design registrations need to be renewed periodically. There are variations as to how long registrations can remain in force if they are renewed.
UK registered designs and registered Community designs last for an initial period of five years. They can then be renewed for further periods of five years, up to a maximum period of protection of 25 years.
What happens after a design application is filed?
At the UKIPO and EUIPO applications for registered designs are examined relatively narrowly. For example, the EUIPO only examines to see if the application fulfils formal requirements, and that it is not contrary to public policy or accepted principals of morality. In particular, they do not conduct any examination to ascertain whether a registration would be valid. When attempting to enforce a registration, it is common for others to assert that it was not validly registered, and attempt to invalidate it.
What constitutes a valid design registration?
There are a number of factors affecting the validity of a design registration in the UK and EU. Most frequently, registrations are found to be invalid because the designs they protect were not “novel”, or did not have “individual character”, at the time they were filed.
What makes a design ‘novel’?
A design is considered novel if no identical design was made available to the public before the application was filed.
When does a design have ‘individual character’?
A design is considered to have individual character if the overall impression it produces on the “informed user” differs from the overall impression produced on such a user by other designs which were already available to the public when the application was filed.
Someone is using a design identical or similar to my registered design; can I sue them for infringement?
If somebody is using a design identical or similar to yours, there is a possibility of bringing infringement proceedings against them. The first step would be to seek professional advice. Beck Greener would be willing to discuss the issues with you at a free initial meeting and, if there might be a case, to provide details and costs of recommended further actions. We might suggest that we write to the alleged infringer, or that we make enquiries to ascertain the validity of your registration, and we can advise as to whether there are grounds to bring proceedings.
I do not have a design registration, but someone else is using a design which is identical or similar to mine; what can I do?
European law provides limited protection for designs which have not been registered. Unregistered designs are protected for three years from the date on which they were first made available to the public, and can be enforced only against those who have copied the design. If they independently came up with a design identical or similar to yours, the right is not infringed.
UK law also provides limited protection for unregistered designs.
If you believe that your unregistered design has been copied, Beck Greener can assist. We would be available to advise whether or not you are likely to be entitled to assert such a right in the particular circumstances.
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