What is Registered Design?
Posted on 26th August 2021 at 17:40
All aspects of Intellectual Property are extremely important to the value, investment and reputation of a business, none more so than Registered Design protection. A Registered Design protects the appearance, physical shape, configuration and the decoration of products whereas trade mark registration protects the names of your products or brands.
Benefits of Registered Design
A Registered Design gives you the right to prevent others from using it, it is an exclusive right and therefore the best form of protecting a design.
A Registered Design makes taking legal action against infringement and copying more straightforward which is more likely to result in a more cost effective and successful litigation action.
Once registered you can display your registration number of your design which will also act as a deterrent to potential copiers.
A design qualifies for registration if:
It is new. A design must be ‘new’ at the time of filing. Subsequently, if the design has been disclosed or made public (other than by the designer, see below exception) prior to filing or if the design is not materially different to another design that has already been made public then the validity of the Registered Design can be attacked which, if successful, would result in the cancellation of the Registered Design.
One important exception to the above is that if the prior disclosures of a design is made by its designer, or in consequence of a disclosure made by the designer, within 12 months before the filing date (or priority date, if applicable) of the application then this cannot render the Registered Design invalid by a third party. If the designer made the design public more than 12 months after the filing of the application then the Registered Design can be declared invalid.
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.
The above provisions do not exclude disclosures made independently of the designer during this period, and therefore applications should be filed before the design is disclosed if possible.
However, even a design that meets the above criteria can be refused registration for the following reasons:
• It is offensive (for example feature graphic images or words)
• It is not your own intellectual property
• It makes use of protected emblems or flags (for example the Olympic rings or the Royal Crown)
• A design registration cannot protect features of a design which are solely dictated by the product's technical function
A Registered Design gives you the right to prevent others from using it for up to 25 years - you have to renew the Registered Design every 5 years.
We specialise in all aspects of design registration from conducting initial searches on the Designs Register to assessing any potential infringement issues and novelty issues against earlier Registered Designs through to the registration of the design. We can also represent you and offer advice in relation to any invalidity claims filed against your Registered Design as well as conducting frequent ‘watching’ searches on the Designs Register so that we can file for invalidity of any design that is not materially different to your Registered Design.
Filing a design application
We will require certain documents and information to enable us to prepare and file an application, we need drawings or photographs showing all features of the design.
We also need to know:
The full name, address and nationality of the applicant (which may be an individual or company); and
A description or general name of the article to which the design is to be applied (if this is not obvious);
Full details of any application from which you wish to claim priority.
We can also include a brief explanation of the design in the application, but this is not compulsory. If priority is claimed, then it is necessary to submit a certified copy of the priority application within three months of filing.
Deferment of registration
A UK Registered Design is usually registered and published once it has passed the registration process. However, the registration and publication can be deferred for up to 12 months from the filing of the application.
This is achieved by not consenting to the publication of the design in filing, and then filing a subsequent consent at some point before 12 months from the filing date.
There is an additional fee for deferring the publication and subsequently the registration of the design.
There are often situations where immediate publication of the content of the design registration may not be desirable, such as when corresponding patent protection is being pursued in respect of the content, or where the content relates to an upcoming product that has yet to be formally publicly announced. A UK design application can be deferred for a maximum of 12 months.
It is possible to file applications covering more than one design, with no restriction on the designs which are grouped together. The advantage of filing such multiple applications is a reduced cost compared to single applications.
Each of the designs in the multiple application is a separate piece of property and therefore can be licensed and assigned separately.
At renewal, not all the designs have to be renewed. It is possible to claim different priorities for each design and to defer the registration and publication of only some of the designs.
As explained above, an application for invalidity may be filed once the design is registered. An invalidity action may be filed on the basis of a lack of novelty, individual character, or that the proprietor is not entitled to the design. Additionally, the holder of an earlier trade mark or copyright may file a request for invalidity based on their earlier rights.
The filing of a United Kingdom design application generates a "priority date" which can be claimed to support corresponding design applications filed abroad within six months of the UK filing date.
It is also possible for a UK registered design application to claim priority from an overseas filing.
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