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Maximising the Return on Designs
The design or look of the various parts of a consumer product can be just as important a part of the overall product branding as a name or trade mark for that product. Equally there will be aspects of the shape or configuration of a product that are not an invention as such and so cannot be protected by patents. Registered and unregistered design rights can be very important assets for companies wishing to prevent the copying of their designs.
1. UK Registered Designs
This registered intellectual property right provides a national monopoly right over designs of the whole or part of a product (including its packaging) relating to its shape, colour or texture, amongst other features of its appearance, excluding those features of appearance which are dictated solely by the product’s technical function.
Under the amended Registered Designs Act 1949, the owner of the registered design has the right to prevent others from making, offering, putting on the market, importing, exporting and using a product, or stocking it for any of these purposes, where this product incorporates or applies the design, or a similar design which does not produce on the informed user a different overall impression.
(a) Registration of a Design
To be able to register a design it must be new. A design is new if no identical design has been available to public anywhere in the world before the application date. However, even if a design has been available to the public, it might still be registrable if:
- it could not reasonably have become known before the registration application date in the normal course of business to persons carrying on business in the European Economic Area (“EEA”) in the sector concerned; or
- that disclosure was unlawful due to, for example, theft or breach of a confidentiality agreement.
Also there is a 12 month grace period for disclosures made by the designer so that you can market and exhibit designs for 12 months before applying for registration. But once that 12 months’ period has passed then your opportunity to register the design has gone.
The design must also have "individual character". This means that the design is such that it leaves a different overall impression on an informed user than any other design made public before the filing date of the registered design application. The Court of Appeal held in October 2007 that an “informed user” was more discriminating than the “average consumer” test used in trade mark law and would be someone aware of similar designs in that field.
An application for registration must be made to the Designs Registry at the Intellectual Property Office together with a visual representation of the design (e.g. drawings or photographs). The Registrar carries out checks to ensure that a design is registrable, but these are usually just confined to searches of existing registered designs. Normally the Registrar just checks that the form is properly completed with details of the applicant, a description and images of the design.
The design is registered in relation to a specific class of goods and there are 45 classes.
The fee is £60 for one design and £40 for each additional design included with that application. The registration should take 3 to 9 months. As the application is straight forward there is usually no or little cost in terms of professional fees.
The registered design can last for up to 25 years in 5 year renewable blocks from application. The fees increase up to £450 for the final 5 years.
(b) Infringement
A recent example of how infringement of a registered design is judged is a case brought by Dyson against Vax (Dyson Ltd v Vax Ltd [2010]). This case involved a claim for infringement of a registered design for the distinctive two-stage dust-separation cyclonic vacuum cleaner which Dyson have been selling since 1994. The judge in that case said that although there were similarities between Dyson's design and the cleaner that Vax was importing, these would not be deemed significant by the informed user, and that furthermore, there were differences which that user would consider significant. Consequently, the registered design and the allegedly infringing cleaner gave different overall impressions so that there was no infringement. An “informed user” (which in this case was held to be a purchaser of vacuum cleaners rather than a person involved in the design or sales of the product) would not be confused into thinking the designs were the same.
2. UK Design Right
Even if you don’t register a design there is still protection that arises automatically. This is an unregistered right created under the Copyright Designs and Patents Act 1988 to prevent reproduction of designs. Unlike with the registered design, the design must be original and not “commonplace in the design field in question”. The right covers the design of any aspect of the shape or configuration of the whole or part of an article. It covers only three-dimensional designs and does not cover surface decoration or a design dictated by the need to interface with another article.
An unregistered UK design right lasts for up to 15 years from creation of the relevant design document or 10 years from the first marketing of articles made to the design, whichever finishes earliest. However, in the last 5 years of the term of the design right any person is entitled to a licence to make and sell products copying (parts of) the design and if the terms of that licence cannot be agreed then they will be settled by the Comptroller of Patent, Designs and Trade Marks. The disadvantage of an unregistered design right is that unlike a registered design you have to prove who created the design and when. Designers should therefore keep clear records of this information.
3. Community Designs
Under the Community Designs Regulation a design may gain protection throughout the European Union to the extent that the design is considered new and has "individual character" as with a UK registered design.
On registration of the design by the Office for Harmonisation in the Internal Market, the design will be protected for up to 25 years (again in blocks of 5 years). The fees for registering a design are small, between 300 and 400 euros as a single fee for protection in all member states for the first five years.
As with a UK registered design, a registered Community design gives a monopoly right to its owner to prevent others from making, offering, putting on the market, importing, exporting and using a product in which the design is incorporated or to which it is applied, or stocking it for such purposes.
There is also an unregistered Community design right under the Community Designs Regulation that lasts for three years from the date on which the design was made public within the European Union. An unregistered Community design right only protects against deliberate copying of the design and does therefore not protect against the use of the design by someone who has independently created it, unaware of the existence of the earlier unregistered design right.
4. Conclusion
The use of registered designs can be a useful weapon to prevent competitors from producing or importing products that copy aspects of the way products have been designed to look. Designs can cover anything from vacuum cleaner parts to designer furniture to prevent the use by other manufacturers of designs that give consumers the same overall impression.
Contact Details
If you would like further advice about any of the issues considered above please contact Paul Northwood on 01869 331753 or email him at paul.northwood@northwoodreid.com
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This article is not intended to be, and should not be taken as being, legal advice. The law often changes and it varies from jurisdiction to jurisdiction; the information in this article is generic in nature and specific legal advice should be taken before acting on any of it.
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