When businesses decide to invest in intellectual property to protect their assets, patents and trade marks are typically the most obvious choices and are often a good place to start. However, when it comes to protecting the investment made in developing the appearance of a product or brand, patents and trade marks can come up wanting. What is needed is a registered design – one of the less well known forms of IP right – which protects what a product looks like, rather than how it works or the brand it represents. In fact, given the amount of time, effort and money now put in to ensuring a company’s image and product line have the right “look”, most modern businesses have valuable assets which could (and should) be protected by way of registered designs – whether they realise it or not.
The benefits of registered designs are clear. However, they are often not as well understood by businesses as are patents and trade marks. To help you avoid being tripped up on the road to obtaining registered design protection, we debunk five of the most common myths about registered designs below, with more to follow in part two!
******** Stop Press! – BREXIT ********
In these heady days immediately following the UK’s decision to leave the European Union, you might be questioning whether EC design registrations still have a role to play for UK businesses. The answer is a resounding yes – EC design registrations will continue to have full effect in the UK until the country formally leaves the EU, which is at least two years away. Beyond that the implications are less clear, but the current expectation is that there will be a conversion process enabling existing EC design registrations to be re-registered in the UK so that no rights will be lost. Therefore, for the time being, it is very much business as usual! Keep an eye on our website for more updates on the impact of Brexit on designs soon.
(1) “Design protection can only be obtained for 3D designs.”
Myth – Under UK and European Community design laws, a registered design can protect two-dimensional as well as three-dimensional designs. In both territories, the term “design” covers just about anything, and design protection can be obtained for any product, part of a product, or its ornamentation. The term “product” includes not only physical, 3D articles, but also graphic symbols (such as logos or icons), typographic typefaces and graphical user interfaces (GUIs), while “ornamentation” includes surface decoration, such as motifs and patterns that may be applied to the surface of a product. As a result, whatever you are looking to protect the appearance of, it’s likely that at least some part of it will be suitable for protection by a registered design.
(2) “It doesn’t make a difference whether design protection is based on a photograph or a drawing of my design.”
Myth – The way your design is represented in your application establishes the scope of protection of your registered design. It is crucial that you consider carefully what aspects of your design you wish to be protected and how they are shown in your design application. An experienced design attorney will be able to advise on this and assist in getting the right representations prepared. For example, a line drawing will generally protect the shape of a product independently of its colour, texture or materials, while a photograph will protect the product as it is shown and will be limited by these characteristics in as far as they can be recognised from the photograph. This can make all the difference as to whether a third party’s product will infringe your design registration, or not.
(3) “Unregistered design protection is just as good as registered design protection.”
Myth – Relying on unregistered design protection makes enforcing your rights much more difficult as it is necessary to prove that the design was copied by any alleged infringer. Proving copying can be onerous in and of itself, and to make matters worse, unregistered design protection ends much sooner than registered design protection, leaving the door open for your competitors to follow you to market faster than you might have thought. An unregistered European Community design lasts only three years, while in the UK, you could also be obliged to license your UK unregistered design after as little as five years on the market and might be completely unprotected after only ten years. In contrast, both UK and European registered designs last up to 25 years!
(4) “Registered design protection is too expensive for small businesses to consider.”
Myth – Registered designs are one of the most inexpensive forms of paid-for intellectual property, with UK or European Community-wide protection being available for significantly less than either patents or trade marks covering the same territories. What’s more, typically the up-front costs of filing the design registration will get you five years of UK or EC protection with no more expense until that period is up. Advice from an experienced practitioner on what designs to file and what filing strategy to use can help reduce the cost of establishing your registered design portfolio and stretch your budget further.
(5) “It takes far too long to obtain design protection.”
Myth – The design registration process in the UK and Europe is fast, with applications typically being processed within only a couple of weeks – sometimes even within a matter of days. This is largely because applications are only subject to a formalities examination and an examination that what is being registered is in fact a design. This means that, with advice from an experienced practitioner, an application will typically complete the registration process without receiving any formal objections and your design will be protected sooner than you might have thought.