Frequently Asked Questions

Welcome to our collection of Frequently Asked Questions. Please note that the information given is necessarily of a basic and a general nature, and that there are many exceptions to these general rules.

Professional advice should be sought for any specific matter.

Design
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 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?     

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 only, whereas 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 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 should 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 contrary.

Can only an individual apply for a design registration?     

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, whereas 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, OHIM 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.

Copyright
What is copyright?     

Copyright arises either automatically when a work is created, or when it is recorded, and enables authors to prevent copying of their work.

Copyright does not protect technical inventions, which are protectable under patent law, or personal, business or brand names, which are protectable under trade mark law. Copyright can exist in the designs of manufactured goods, but the designs of products to be produced commercially are better protected by design law.
 

How does copyright arise?     

Copyright in literary, dramatic and musical works, whether created by people or generated by computer, arises as soon as they are recorded in some form, provided they are original.

In general, the quality of the work is irrelevant, what is needed for a work to be considered original is that the author expends skill or effort to create it. Thus, a writer will have copyright in his novel by writing the book, even if it is not a very good book. Someone using skill or effort writing a shopping list, will have copyright in the list. There is copyright in the football fixture lists as skill and effort is expended in ensuring that every team plays every other team, both home and away, and that no team has to play two matches on the same day. This is the case even though computers are increasingly used to generate such works.
 

In what works can copyright exist?     

In the United Kingdom, copyright can exist in:

  • Original literary, dramatic, musical and artistic works.
  • Literary works include the text of books, poems, and plays, song lyrics, movie scripts, computer programs and databases.
  • Dramatic works include performances of plays, dance or mime.
  • Musical works are works consisting of music, but exclude words or actions intended to be performed with the music.
  • Artistic works include photographs, drawings, paintings, etchings, sculptures, collages, maps, charts, plans, and works of architecture.
  • Sound recordings, films or broadcasts.
  • Typographical arrangements of published editions.
How do I register my copyright?      

In almost all jurisdictions, including the UK, there is no official register of works in which copyright exists. For enforcement purposes, what is important is that an owner is able to provide evidence as to when the copyright work was created/recorded, and that they own it.

Steps should be taken such that an author can prove his ownership of the copyright. For example, the original of the work should be safely retained, its author or creator should be identified, and the date on which it was made should be recorded. In most cases, the simplest way to do this is to have the author sign and date the original and then file it safely away.

Works generated with the aid of computers or word processors can be stored either on disk or on hard copy.

A record should also be kept of the date on which the work is published, or otherwise made available to the public. The original work can be countersigned by an independent party to verify the date of its existence. That independent party should indicate on the work that it has been seen by him on the given date and represented to him as being the original work of the author.

Who owns copyright in a work?     

Generally, the first owner of copyright in a work is the author (i.e. the person who has created it). For sound recordings, the author is taken to be the producer, for films, the author is the producer and the principal director.  There are exceptions to this general principle.  For example, if a literary, dramatic, musical or artistic work, or a film, is made by an employee in the course of his employment, unless there is an agreement to the contrary, their employer is the owner of copyright in the work.

Ownership of copyright can be assigned, licenced and transferred.
 

What does having copyright entitle the owner to do?     

The owner of copyright in a work has the exclusive right to:

  • Copy the work.
  • Issue a copy of the work to the public.
  • Rent or lend the work to the public.
  • Perform, show or play the work to the public.
  • Communicate the work to the public.
  • Make an adaptation of the work.

The copyright owner can permit or licence others to do any of these acts.

If someone other than the copyright owner does any of the acts listed above without the owner’s permission, they will likely infringe the copyright in the work concerned.

Also, a person may infringe copyright if they import infringing copies of works, possess or deal with an infringing copy, provide ways for others to make infringing copies, allow their premises to be used for infringing performances, or to provide apparatus for such performances. 

What are moral rights?     

There are certain “moral rights” in relation to copyright works.  For example, the author of a literary, dramatic, musical or artistic work, and the director of a film, has a right to be identified as author/director in certain circumstances. This right must be “asserted”. This is why at the start of a majority of novels, you will see phrases such as “X has asserted their right under the Copyright, Designs and Patents Act 1988 to be identified as the author of this work”. 

How long does copyright last?     

The duration of copyright protection depends on the work involved. For example, in the UK, literary works are protected for 70 years from the end of the year in which the author dies. 

I think someone is infringing my copyright, what should I do?     

If you believe someone is infringing your copyright, it is sensible to seek professional advice. Beck Greener can advise as to whether you have copyright in a work, and whether or not a third party is, or appears to be, infringing those rights.