What is a registered design?
A registered design is a right to prevent others making, selling or otherwise dealing in products made to a design which has been registered. It is not necessary to show the design has been copied and the right may be enforced against someone who has independently developed the same design.
What can be protected by a registered design?
Any new three-dimensional (3D) product, including parts of a larger product; and two-dimensional designs, including graphic designs, computer icons and typographic type-faces may be the subject of a registration. The protection is for the appearance of the whole or part of the product, including, shape, configuration, colour, pattern and ornamentation.
There is very little in the way of designs that cannot be protected. In fact, registered designs can be used to protect articles ranging from entire buildings to pen lids; logos; patterns; colour schemes and surface finishes; typefaces; and graphical user interfaces.
What do I need to demonstrate to obtain a registered design?
In order to be registered, your design must:
- be novel; and
- possess individual character.
Both these criteria are judged with reference to designs which have been made available to the public before the effective filing date of the application.
For a design to be novel it must differ from earlier designs by more than immaterial details.
For a design to possess individual character, it must produce a different overall impression on the informed user compared to earlier designs. In many cases, the informed user is likely to be the end user of the product.
How long can a registered design be maintained?
If granted, a registration can last 25 years from the filing date of the application, but to do so it must be renewed (through payment of a fee) at five-yearly intervals.
Would a registered design be helpful for my business?
Design rights can be granted relatively quickly, are inexpensive and can offer another layer of protection for your invention not offered by other intellectual property (IP) rights.
Once you have obtained a registered design there is no requirement to show deliberate infringement, and so these rights can act as a cost-effective deterrent to potential infringers.
What happens if I have already disclosed my design?
An application for a registered designs should always be filed before the design is publicly disclosed; otherwise this can preclude the opportunity to seek registered design protection. However, under certain circumstances, a 12 month self-disclosure grace period exists in the UK and Europe, which means that a prior self-disclosure of a design can be disregarded.
However, such disclosures may prevent registering the design in foreign countries, especially outside the European Union, as many countries in the world do not allow such a grace period, or allow a shorter period.
This provision does not exclude disclosures made independently of the designer during this period, and therefore applications should be filed before the design is disclosed if possible.
What else should I consider?
Once again, a registered design does not give the owner the right to use that design as it may infringe a third parties’ IP rights. Accordingly, it is useful to conduct a freedom to operate search in order to identify any potential risks.
How can Mathys & Squire help?
Mathys & Squire has unrivalled expertise in patents, trade marks, design protection and litigation with offices in London, Birmingham, Cambridge, Manchester, Newcastle, Oxford, Luxembourg, Munich and Paris, as well as teams based in China and Japan. Our attorneys (both training and qualified) have a mix of scientific degrees extending from chemistry, biochemistry, pharmacology, genetics, microbiology, plant sciences and zoology through to physics, electronics, telecommunications and engineering. We are passionate about creating and delivering innovative, high-quality, client-focused services and building close and longstanding relationships with clients in order to establish defensive and offensive IP portfolios that generate commercial value.
