Registered designs are available in the UK and EU. Registered designs protect the appearance of a product only, and not its function. In addition, various equivalent forms of registered design protection are available in most countries around the world, for example in the United States as a design patent.
The UK and EU registered design systems are broadly similar in terms of the protection offered to design owners. Registered designs can be used to protect the appearance of an extensive range of products which include two-dimensional as well as three-dimensional products. The availability of protection for two-dimensional products significantly increases the commercial value of registered designs. For example, graphical user interfaces, icons and typefaces are protectable; even computer animations can be protected. Furthermore registered designs can be used effectively to protect packaging and, in parallel with the trade mark system, to protect logos and other branding.
An important practical factor to consider when registering a design is that it should be new. Generally that means the design should not be in the public domain prior to the initial date upon which a registered design is filed. Indeed, it is advisable to start the design registration process before your design is publicly disclosed to ensure your own disclosure does not prevent you from obtaining registered design protection. In circumstances where a disclosure of the design is made before registered design protection is sought, it is possible to take advantage of a grace period, provided by the UK and EU registered design systems, which allows the design owner to validly file a registered design within one year of the date on which they made a public disclosure of the design. While this grace period can be useful when seeking protection in the UK and EU, it is important to note that such grace periods are not available in all countries, meaning an early disclosure may limit your options for international filing.
The scope of protection provided by registered designs is defined by the representations of the design used in the application. UK and EU registered designs each provide protection against other designs only to the extent that such other designs do not produce a different “overall impression” on the informed user. The meaning of this wording has been interpreted by the courts and this interpretation forms part of our analysis when providing pre-filing advice to ensure you have the strongest and most appropriate design protection.
Registered designs have proven to be a flexible and effective form of intellectual property for many of our clients. One of the principal benefits is that a registration number can be obtained very quickly and used to mark the products that they protect, together with other marketing materials. This is a strong deterrent to copycats and would-be infringers. As a registered IP right providing an associated set of visual representations of the product they protect, registered designs may be readily licensed and used in other commercial transactions, often in conjunction with any associated unregistered design rights patent and trade mark rights.
For those who are concerned about the scope of a particular registered design it is possible to challenge the validity of the registered design by invoking invalidity proceedings. For example an invalidity action against an EU design can be filed at the EUIPO. This is a straightforward procedure in which the challenger and design owner submit written evidence and arguments, after which a written decision is issued by the EUIPO, typically a few months from the date of filing of the invalidity action. We act on behalf of those wishing to invalidate a registered design and also for design owners wishing to comprehensively defend third party challenges.
Registered designs are an important form of registered intellectual property in the UK and EU. They provide a mechanism of protecting a wide range of commercial products quickly, effectively and at low cost. In a similar manner to patents, registered designs can be a very effective commercial tool to protect product markets and to use in business negotiations. GJE’s designs team are here to help you realise the potential of design protection to help your business. If you would like more information, please contact a member of our designs team. View our designs team here by filtering by service..