In this second of two articles on the benefits of registered designs (the first of which can be found here), we tackle five more of the most-commonly repeated myths we hear on the subject:
(1) “We’ve already shown our design, so it’s too late to apply for protection.”
Myth – While we recommend that all design applications are filed before the design is disclosed, both the UK and European Community design systems have implemented grace periods to allow designers and businesses to test the waters before deciding whether to apply for registered design protection. It is still possible to validly file UK or Community registered design applications up to 12 months after the date of first public disclosure. In practice this means you can still apply for a registered design up to one year after you’ve shown your product to third parties – it’s not too late to protect it!
(2) “We know there’s a grace period for designs, so we can worry about worldwide protection later.”
Myth – But, a word of caution – while UK and European Community design laws provide grace periods, many other countries do not. If you disclose your design to a third party before considering design protection, you will miss out on the opportunity to protect your design in countries such as China and Australia, and many others. If you are worried about investing in an unproven design, then we can help you make use of a six month priority period, recognised by most countries, allowing you half a year to gauge the success of your design with minimal monetary investment.
(3) “We can’t file a registered design application yet because we aren’t ready to make our product known to the public.”
Myth – Normally, a UK or European Community registered design will be published shortly after it is allowed, which could be within a week or two of applying. However, it is possible to defer publication of your design in order to keep your design secret for longer. In the UK, publication can be deferred for up to 12 months, whereas it is possible to defer publication of a European Community design for up to 30 months. The downsides to deferring publication are that there is an additional cost associated with deferred publication and that in order to enforce your right you must have communicated information relating to your design application to the alleged infringer. Additionally, it is vital to request publication before the relevant deadline for doing so – an experienced design attorney will be able to monitor this and ensure you don’t forget.
(4) “It is not possible to obtain both trade mark and design protection for the same item.”
Myth – Many businesses protect their logos and other similar graphics as registered designs in addition to protecting them as trade marks, and there are many advantages to doing so. For instance, unlike trade mark registrations: a design registration does not require evidence of use to enforce it, a design registration is not limited to specific classes of goods and services, and it is not a requirement of infringement that there is likely to be confusion as to the commercial source of the infringing item. While design protection is by no means a substitute for trade mark protection, it can complement your trade mark rights, and adds to your IP armoury.
(5) “We’re not copying anybody’s designs, so we don’t need to worry about whether our competitors have design protection.”
Myth – Registered design protection is a monopoly right, which means that, when considering infringement, it doesn’t matter whether the design was copied or arrived at independently. So simply having the knowledge that you did not copy anyone else’s product does not necessarily mean you have avoided any design registrations they may own. You should seriously consider investigating whether you are free to operate before launching any product that might be protected by a design registration. An experienced design attorney will be able to help you with searching for potentially relevant registrations and provide advice on the level of risk they might pose.
If you would like to find out more about registered designs and how they apply to your business, please contact Heather Scott, Partner, via email@example.com.