In many industries, what a product looks like is now just as important as how it functions – and sometimes even more so. Not only can the appearance of a product cause a consumer to select that product over those of competitors, but it can become a defining part of a brand’s identity. As a result, companies now spend a huge amount of money in creating the right look for their product.

However, many businesses often overlook the need to protect the appearance of their products, realising the commercial value of doing so too late once their competitors have started to imitate it; or they wrongly believe that their designs are adequately protected by copyright.

Design registrations exist specifically for this purpose and can be relatively inexpensive and quick to obtain. They do need to be carefully thought out though, before filing, in order to make them effective and valuable.

Below, we address the most important things you need to know about designs. Starting with the basics, we move on to cover strategy, enforcement and how to avoid costly litigation.

Visit our Patents FAQ and Trade mark FAQ pages to find out how you can further protect your innovations and brands.

Design Basics

Distinct from patents, which protect technical inventions, and trade marks, which protect branding, a design relates to the appearance of something – usually a tangible object, but also graphical elements such as user interfaces, typefaces and even logos. Essentially, the design represents all the hard work and time put into what the article looks like, rather than how it works or what company it came from. Designs can be protected either by obtaining a design registration or, in more limited circumstances, by relying on unregistered design rights (UDR).

Both design registrations and UDRs can be licensed to third parties, either for a flat fee or for profits-based royalties, providing an additional revenue stream. Design protection can also make a business more attractive to investors or acquirers as it offers an additional layer of protection to their investment.

Design registrations need to be applied for and, once granted, offer a monopoly right meaning that they can be enforced against third parties using the same design whether or not they arrived at that design independently. In contrast, UDRs do not need to be applied for and will subsist automatically if the relevant criteria are met, but they are only effective against third parties who have actively copied the design. As such, registered designs are typically perceived to be of greater value.

Find out how we can help you protect your designs here.

Design applications are filed with an Intellectual Property Office (IPO). The speed of the process varies from country to country. Some IPOs, including the UKIPO and the EUIPO, do not conduct a substantive examination of design applications and so a registration can be granted in a matter of days or weeks. Other IPOs, such as the USPTO, conduct a more thorough examination and hence the process can take between one and two years.

The cost of filing a design application also depends on the country in question. Generally the process is cheaper than filing a patent application since no detailed specification is required. However, much of the value of the design registration depends on the quality of the drawings (or other representations) filed to show the design and so it is important to get these right at the outset.

Find out how we can help you protect your designs here.

While the rights to the design will always originate from the person who created the design, depending on the country, those rights (and hence ownership of the design) may well be automatically transferred elsewhere. For example, in the UK, a design created by an employee will typically be owned automatically by their employer. It is particularly important to ensure that, where multiple parties are involved, there is a contract in place which makes clear who will own the resulting IP (including designs).

Find out how we can help you protect your designs here.

There’s no legal requirement to have an attorney prepare and file your applications, but going it alone is risky. Despite their apparent simplicity, design applications are easy to get wrong, for example by filing drawings which inadvertently limit the scope of protection which you hoped to obtain. This can have significant consequences for your business strategy. The long-term cost of an error could significantly outweigh the up-front cost of engaging an attorney.

In the UK, registered patent attorneys and trade mark attorneys are also qualified to advise on designs and will be able to help get the right design protection for you.

Find out how we can help you protect your designs here.

Design Strategy

If your business involves creating products which have value in their appearance, then yes! Indeed, a design right strategy could be critical to your business’ success. Even if the appearance of your products is a peripheral factor, designs can provide an important additional tool in your IP armoury. For instance, well thought out design protection will help:

  • Safeguard the value you have invested in the look of your products;
  • Act as a strong deterrent to would-be counterfeiters;
  • Give potential investors more confidence in your business model;
  • Knowing what it will cost to protect new designs, and when these costs will hit, will help with budgeting and cash flow.

A good designs strategy will also make sure the scope of protection obtained through the designs ties in with your business plan. Key to this is ensuring that your design registrations represent the right features of your product, and in the correct way. The well-known Trunki® case (reported here) went to prove that the value of design registrations can be significantly diminished if this is overlooked.

Find out how we can help you develop a robust IP strategy here.

A good designs strategy should be integral to your overall business plan from the outset, especially if your business model hinges on the creation of products with a new and distinctive look. First, you need to clearly identify how your new designs support your business – are they new products you plan to make and sell yourselves, for example, or do you plan to licence them to a third party? How will the designs bring you closer to achieving your business goals – will it help with customer acquisition, or will it make the business more attractive to a potential investor or acquirer?

Once you’ve established the role of designs in growing your business, you need to put reliable processes in place to map the discovery and protection of designs against your business plan.  How are you going to identify new designs as they are created, and ensure that registrations are sought at the appropriate times?  Which countries must protection be secured in?  Are any aspects of your product line better suited to unregistered design protection (UDR) and if so how are you going to store the necessary information which you would need to enforce UDR?

Make sure your employee contracts are clear from the outset about who owns designs created in the course of their work for your company.  Pay close attention to the involvement of people from outside your company, such as consultants, and ensure that your contract with them includes clauses for transferral of their rights in the IP to you.

Find out how we can help you develop a robust IP strategy here.

Since design registrations are only effective in their own country, you’ll need to select which countries to get protection in, in line with your business model, and apply in each one. For example, your key markets should be covered as a priority and it is often well worth considering where your main competitors are based too. Depending on the country, it can be critical to file the design application before you have disclosed the design to anyone in a non-confidential manner. You should therefore seek advice on this as soon as the development of the design is reasonably advanced so that the application can be filed as soon as it is finalised. In some countries it is possible to file the application up to 12 months after you have disclosed the design, but this is the exception not the norm.

Find out how we can help you protect your designs here.

There are some circumstances where you may be better off relying on unregistered design protection (UDR) rather than bearing the costs of obtaining a design registration. This is often the case, for instance, in fast-moving industries such as fashion where a particular design may only have relevance to your business for a few weeks or months and does not warrant a design registration. That said, you should ensure you are familiar with the differences between registered designs and UDR at the outset, and also with the criteria which must be met in order for UDR to arise – since there are many situations in which UDR will simply not be available.

Find out how we can help you develop a robust IP strategy here.

Design Enforcement & Infringement

Unlike unregistered design rights (UDRs), registered designs can be infringed without you having actively copied that design from their owner in the first place. If you are found to have infringed a valid design registration, you may be subject to significant financial penalties and stopped from using the design any further. It is therefore important to find out what relevant design registrations are out there so that you can avoid them. A starting point is to research your main competitors’ designs – for example, they may have marked their product with a design registration number, or listed that information on their website. Design applications and registrations can also be searched to find ones similar to your proposed design, and individual companies or technologies monitored for new filings. All of this will enable you to assess the level of risk posed, and ultimately to establish your freedom to operate.

Unfortunately, that information isn’t all in one place. There is no single centralised design database, and you need to establish freedom to operate in each individual market you intend to enter, so carrying out the necessary due diligence can be expensive and time-consuming. Cutting corners isn’t a viable option – not when you consider the potential cost of having to fight a legal action, withdraw a product from a market, halt expansion plans, or prepare for dramatically reduced investment.

Find out how we can help you avoid infringement here.

If you’ve spotted a lookalike product, your first instinct may be to try to enforce your design registration by launching legal proceedings against the party producing or selling the product.  All very well if you have the funds and the stomach for the fight, but you should always carry out a cost-benefit analysis before initiating any proceedings. What will it cost you in fees if you win, but also if you lose? How much could you stand to win in damages if you are proved right? How many of your senior team will it divert from the day-to-day running of the business, and for how long? In short: will enforcing your design registration pay for itself?

Tread carefully if you do go down the litigious route. Recent changes to the law have made the consequences for threats that are considered “unjustified” much more severe. Consult a patent or trade mark attorney in the first instance to make sure any claim you make is grounded in expert legal advice. Inform the suspected offender of the existence of the design registration you believe them to be infringing, but steer clear of any requests to cease selling a product – and certainly don’t shout “See you in court!”

Expensive litigation isn’t the only option. Mediation or arbitration can be effective alternatives – especially if you can strike an agreement to license your design registration to the offending party for a fee.

However you go about it, active policing of your design registrations is vital. If you don’t maintain your exclusivity rights over your design by enforcing your registrations, licensing them, or selling them, you are squandering the investment made in developing the invention and securing the protection in the first place.