It is essential for designs to be registered so that they can be protected under intellectual property law. To gain as much protection as possible, one must apply for their design to be registered not only in the UK, but internationally. One way is by filing an application for a Registered Community Design.
The value of design rights received a significant improvement in 2013 with the implementation of the Enterprise and Regulatory Reform Act 2013. Prior to this Act there had been an exception in copyright law that meant design rights received protection for a much more limited period than other copyright works.
Under the Copyright, Designs and Patent Act 1988 (” the Designs Act”), dramatic, artistic and literary works are automatically awarded protection for 70 years following the death of the author. However, section 52 of the Designs Act limited this period to 25 years for artistic works which had been industrially copied (i.e. designs). The Enterprise and Regulatory Reform Act 2013 repealed section 52 of the Designs Act meaning that commercial design rights now have the same duration of protection as other copyright works.
Unregistered designs do receive a limited amount of protection both in the UK and the EU but the durations are restricted to a maximum of 15 years for the former and 3 years for the latter. Unregistered design rights are also less extensive in scope than registered design rights so it remains important that designs are registered in order to benefit from the full protection of intellectual property law.
Registered design rights in the UK offer enhanced commercial protection for design and manufacturing businesses over and above unregistered designs. They can protect either the whole or part of a product by reference to a variety of feature such as colours, shapes, textures and contours. One of the key differences between unregistered and registered designs is that to prove infringement of an unregistered design, the claimant must show that the design was copied. There is no such requirement with registered designs.
In order to benefit from registered protection, designs should be registered within 12 months of the products first being marketed in the UK which requires an application to be made to the UK Intellectual Property Office. The application should be made using form DF2A and sent along with supporting documents to the Intellectual Property Office. These should include illustrations and explanations about exactly what aspects of the design are being registered. A fee is required for each application and the process typically takes around three months.
Design rights must meet a number of criteria if they are to be registered successfully; most importantly a design must be new and not be something already available to the public. In addition, it must avoid being offensive, it must not make use of protected flags or emblems and it must not describe how a product works (typically this requires a patent registration). The design must also have unique character which can relate to its appearance, physical shape, decoration or the configuration of the design.
Once the Intellectual Property Office receives the application, it will review the proposed registration within 1 month and if there are no objections it will publish the design right. If there are any issues that the Intellectual Property Office considers are an impediment to registration, these will be notified to the applicant who then has two months to remedy any deficiencies. If an applicant disagrees with the Intellectual Property Office’s decision or is of the view that their design right application has not been dealt with fairly they can request a hearing with a hearing officer. Any decision made at this stage can be appealed.
Design right registration must be renewed every 5 years and to avoid any charges, renewal should take place in the period 6 months before to 1 month after the renewal date. There is a 6 month deadline for late renewal and, if this is missed, design right holders need to apply to ‘restore’ the design and give a valid reason for missing the deadline.
Registering a design in the UK does necessarily protect it abroad. To gain international protection, the following procedures may be necessary:
Application for a Registered Community Design which covers the EU;
File individual applications directly to countries worldwide where the design is expected to be marketed.
Apply through the Hague System to apply to several countries under one application through the World Intellectual Property Organization.
The changes to design right protection in the UK have increased the value of design related intellectual property assets. It is therefore essential that these are given the full benefit of registered protection. Expert intellectual property lawyers can assist with the registration process, particularly any appeal hearings, and with enforcement of rights against infringement by third parties.
Our intellectual property lawyers advise on applications for registered designs and intellectual property rights protection. To speak with one of our designs lawyers, call 020 7353 1770.
