Patents • Designs • Trade Marks
Much of the design work of a business generates output that is of value to the business and of interest to its competitors. Yet much of that work falls outside the scope of patent protection. A significant body of work that falls into this category is aesthetic product design. Detailed component design is also within this category.
For example, you may have designed a product that is conventional in its technology, yet has a uniquely attractive appearance which enhances its marketability. At the other end of the scale, the development may be a piece of detail design that is an elegant engineering solution, but that is not sufficiently inventive to be patentable
Where a product has a special appearance, which might be called "eye-appeal", it may be protectable by design registration. Everyone knows of products which have an attractive visual appearance which adds to their value. If you have spent time and money on creating a distinctive design, you have to protect it unless you are happy for your competitors to use it as well. The protection available is a registered design.
Almost any piece of design with eye-appeal can be protected. The design of a complete article can be registered. A small range of examples include a computer printer, a chair, a car, a desk lamp, and a door handle.arts of an article can be registered. Examples are a car door mirror, a saw handle, and a dial of a clock. More abstract designs can also be registered. For example, a tyre tread pattern, a computer display icon, and possibly the "look" of a computer application or operating system display.
It is possible to make an application to register a design in the UK only. However, this is now quite rare in my experience. The reason is that it is also possible to obtain a registration that covers the entire European Union for little more than twice the cost of a UK design. Therefore, many design filings now bypass the UK Designs Registry by being filed in a Community Design application. These applications allow multiple designs to be protected throughout the EU with a single application.Where more than one design is to be protected, it is often less expensive to register them throughout the EU than in the UK alone!.
The procedure for obtaining a registered design is certainly not as complicated as applying for a patent, but does require care and knowledge, and if the application is filed incorrectly, you may not be able to correct it later. If you are in doubt, please seek professional help.
A design application can be validly filed within six months of your making the design public. However, this does not protect you against someone else publishing the design before you file an application. Therefore, it is advisable to file an application as soon as the design has been finalised. Moreover, for valid protection to be obtained in some non-EU countries, the first design application must be filed before the design is made public anywhere.However, it is generally not effective to file a design application until the visual appearance of a product, as it will actually enter production, has been finalised.
A competitor who introduces a product that differs in appearance from your registered design by only small details does not automatically escape infringement. Your protection has a scope that extends around the design you have registered, enabling you to prevent others cashing in on the success of your design efforts. It is not sufficient for a competitor to show that they did not copy your design and that their similar product was designed independently. With registered designs, only the appearance of a competitor's product decides infringement, not how the appearance came about.
It is important to remember, registered designs are only concerned with appearance, not technical matters; these are the ambit of the patent system. Nevertheless, some products can benefit from both registered design and patent protection: if a product has one type of protection does not rule out further possibilities for protecting it.
Where a design does not have eye-appeal, it probably cannot be protected by design registration. However, almost anything that you design has the benefit of design right protection. This applies to whole products and to their component parts.
Rather like copyright, design right comes into existence automatically when a design is made. Registration is neither necessary nor possible. To support a claim to design right, you should make sure that you keep good records so that you can show how and by whom the design was made.
The term of design right is difficult to calculate. It can last up to 15 years from the date of design in the UK (but is restricted in scope five years after the launch of a product made to the design. In other EU countries, unregistered design right lasts only three years.
Your competitor must have copied your design to infringe your design right. If someone copies your design and then changes some of its features, this does not necessarily let them off! However, if someone else comes up with a similar design independently, you cannot stop them with design right. This works both ways. If you want to avoid design right infringement, all you need do is ensure that you do not copy.
The restrictions to the power and duration of unregistered design right prevent it being an effective substitute for design registration.
As with all intellectual property law, design protection is a complex matter, and it is probably the type of IP that will be most troubled by the UK's departure from the European Union. Designs may be of significant value to your business. If in doubt, please contact me to discuss whether you need to take any steps to secure your position with regard to designs.