Designs determine the success of products so do design rights. The Intellectual Property Office received more than 25,000 design applications in 2019. That’s an increase of more than 300 per cent from 2015.
If you want your product to perform well in the marketplace, you need to have design rights. But you can’t just rush your design out and assume that you have full legal protections.
What is a design in the legal setting? What qualities can a registrable design have? How can you register your design, and what are your rights?
Answer these questions and you can successfully market and manufacture a line of products. Here is your quick guide.
The Basics of a Design
“Design” has a specific legal meaning in the United Kingdom. A design is the appearance of a part or the entirety of a product.
The appearance includes the lines, colours, and contours of the product. It also extends to the shape, texture, and materials that make the product up. Ornamentation can be included if it is a significant part of the design.
The design can impact how the product operates. A vacuum may have a thin design so it can slide underneath furniture. But the design is largely for eye appeal.
Qualities of Intellectual Property Design
Not all designs can receive formal intellectual property protections. A design must be new with its own individual characteristics. A design is new when no identical design is available to the public. Two designs can share details, but the details must be insignificant.
Individual characteristics focus on the impression that the design makes on the user. A user must recognize that it is different from other ones. They must be able to point to particular features that are distinct in the design.
Certain designs cannot receive registration. A design that is dominated by its technical function is not registrable. A key must fit into its lock, so it cannot be registered.
Features that must be of a certain shape or size to fit into another product are not registerable. You can register a countertop. But you cannot register the bolts you use to secure the countertop to the counter.
Registered Design Rights
Designs are governed by the Copyright, Designs and Patents Act 1988, the Registered Designs Regulations 2001 and the Intellectual Property Act 2014. Chic Consultants can help you navigate these laws.
Registered design rights are extensive. You can manufacture, export, and use any product that incorporates your design. You have the exclusive rights to do so. The design is protected across all sectors and is not limited to the product to which it was originally applied.
If someone violates your exclusive rights, you can file for infringement. A court can give you compensation for your lost earnings and an injunction against the person who stole your content.
You can grant a licence to someone else so they can manufacture your design. You, your lawyer, and them must draft a contract that outlines the extent of their rights.
As long as you have a registration, you can sell your IP design to anyone else. As with granting a licence, you must sign a contract. Once you sign it over, you cannot obtain it back without making another deal.
Unregistered Design Rights
Unregistered designs receive some protections. The owner of an unregistered design can prevent others from making copies of it. They can also stop others from selling or possessing copies.
Unregistered rights start as soon as a record of the design is made. The record can be a visual of the design or a written description of it. It does not have to be made public.
The protections last for 15 years after the record is made. If the design is marketed, protections last for ten years. If the design is made public, its appearance is protected for three years.
The owner can sue for infringement. But they must prove that the design is their intellectual property. They must also show when the design was made. Signed and dated copies of drawings may provide enough evidence.
Hiring an intellectual property lawyer is usually necessary to win a case for an unregistered design. Google “lawyer to protect my design” to find firms that you can compare to each other.
During the last five years, any individual can receive a licence to manufacture the design. The owner cannot sue them for infringement. They can go to the Intellectual Property Office if they encounter a dispute.
Designs are commercially exploitable assets. Design rights can be protected against revenue loss and we tell you how. Alternatively, if you are involved with a design right infringement claim our specialist design rights lawyers will look to dispose of the matter quickly for you.
What are design rights?
Design rights protect the aesthetic appearance of either the whole or part of a product or surface pattern. Copyright exists in the design. These rights can overlap and cannot be distinguished because a design right can protect a look of a product whereas copyright applies to the paperwork that was generated prior to creating a final design.
Design rights include decorative patterns, graphic symbols, the shape of products and their packaging. Examples include the external look of the building or a shop front, such as the one protected by Apple.
To qualify for design right protection, the overall impression of the new design must be different from any existing design. We deal with the many grey areas that arise.
Design right vs trade mark
A number of companies are using design rights together with trade marks or sometimes instead of trade marks to protect their logos. The benefit of a design right is that they are enforceable throughout the EU and can be obtained fairly quickly. Unlike the case with a trade mark, there is no substantive examination of the application by the European Union Intellectual Property Office. However, given that there is no official examination with a design right we recommend thorough personal due diligence which we can deal with. Another disadvantage to a design right compared to a trade mark is that the duration of design right protection is considerably shorter than trade marks.
How long do registered design rights get protection?
Registered design rights both in the UK and EU will give the holder a 25-year monopoly right in the design. This means that the holder can sue for infringement even where the infringer did not copy the registered design. This is because after paying fees for your design application, your design will be published in the design register which is freely available to the public. This is deemed to automatically give members of the public notice that you own the monopoly right over your design. Therefore they cannot copy it without your prior consent. Registered design rights need to be renewed every 5 years.
In the UK, unregistered design rights lasts for 10 years from the end of the year of first exploitation. Compare this with European Community Unregistered Designs, which last for 3 years from when they were first made available within the European Union. A number of industries such as the jewellery and fashion industry use European community rights as they market and sell their products throughout Europe. This right will allow them to not only bring infringement proceeding in the UK but in other EU member states too.
The duration, quick and cost effective nature of registration and the option of renewal makes design rights attractive to companies seeking to protect new media and digital products such as mobile applications (Apps), video games and robots along with other applications of artificial intelligence.
Use of design rights in Apps
For mobile applications (apps) whilst copyright will protect the underlying source code of the software application and there is a possibility of a patent, design rights will protect the aesthetic look and feel of the results displayed on the screen of the app or protect the graphic icons that appear on the mobile phones.
Use of design rights with video games
With video games, design rights are used to protect video game characters. This can help the developer to control and license the use of their characters. If a game is popular, characters can be licensed to a wide number of industries such as the fashion industry.
For example, if you have designed a game for children with a distinctive character, you can licence your character to a fashion label to use on t-shirts, bags or accessories.
Unregistered design rights or copyright?
Often, there is an overlap between unregistered design rights and copyright, in that one or more may be relevant to the same article or design. Where a third party infringes one of the rights they may infringe the other.
Where copyright and unregistered design rights are applicable, the law does not allow a party to pursue an action for infringement of both rights. In this case, UK law states that if an action for copyright infringement is available, an action for design right infringement cannot be brought.
Therefore, if both unregistered rights and copyright are available, copyright is the intellectual property right that needs to be relied on
Registered designs or copyright?
If both copyright and registered design right apply to a product, infringement action may be taken in respect of either or both rights.
Practical protection of design rights
There are some simple steps which can be deployed for design rights which we summarise below.
In the first instance owners of a design right should mark their goods, any accompanying packaging and documentation, with design right notices, along with the name of the owner and the year of first marketing. If this small step is taken it can:
- Act as a deterrent to potential infringers;
- Assist in establishing the owner’s right to damages on infringement; and
- Assist in establishing that the infringer knew or ought to have known of the protected right Act as a deterrent to potential infringers;
Register your designs if possible. This will make it easier to bring infringement proceedings.
Our legal services
We deal with registration and monitoring of design rights along with trade marks and other intellectual property rights. The service includes:
- Notification of renewal dates – many design right owners forget to register and suffer loss when as a result they cannot stop infringement;
- Scope the web to see if your designs are being infringed – we will compile a list of infringers and suggest the best course of action to stop them using your designs.
Please do speak to us to see how our service can be of value to you.
Licensing design rights
We can help you by drafting and reviewing design right licences to ensure there are no errors and you receive maximum protection. As the design owner you can licence your designs to third parties through a licence agreement.
A licence agreement will usually deal with:
- Ownership of the intellectual property;
- Exclusivity rights;
- Royalties or fees;
- Restrictions; and
- Consequences upon termination.
But royalties and fess are not the only way you can make money out of your successfully registered design; an outright sale of your design through an assignment can also provide you with a respectable lump sum. We have assisted clients in the past when they are buying or selling a design or a business with the related IP attached.
Solicitors for design rights
We have acted for a variety of clients protecting their IP across industries. We use our experience in advising how to protect or defend a design rights infringement when advising our clients.
- We advised a national beauty care products manufacturer by reviewing new design rights after infringement threats from competitors.
- Managing a design portfolio for a luxury swimsuit manufacturer to ensure maximum protection of the client’s brand in a competitive market.
- Doing clearance searches for multiple start-ups prior to registering new design rights to coincide with product launches. It is key that clients are protected prior to commencement of the commercial advertising campaigns.
Secure Your Rights With Legal Help
A design is the appearance of a product. It is largely independent of the product’s function.
To receive registration, a design must be new and individualized. Registering your design involves filling out an online application.
Registered design rights are extensive. You will have the exclusive rights to reproduce products with your design. You can give a licence to others to do so.
You do have rights without registration. But it is harder to argue for infringement in court so a design registration is usually a good idea.
Turn to intellectual property lawyers for guidance. Chic Consultants is a leading firm for entrepreneurs. Contact us today.