Certain rights can arise automatically in the UK and Europe when original designs are manufactured or sold. However, formal registration of a design can provide many additional advantages. For example, registration provides an extended legal monopoly preventing others from making, selling and using products embodying the protected design features, or importing it into countries where registered rights are held. If necessary, the rights conferred by a registered design can be enforced against infringers in the courts. Our attorneys are dual qualified in both UK and European design law. We guide clients through this complex area and help them secure and protect their competitive advantage.
Registered designs can be enforced against others using the same (or sufficiently similar) designs without permission, irrespective of whether copying is deliberate. Unregistered design rights can only be enforced if copying can be proven to be intentional and ownership of the rights can be proven. Registered designs can be obtained within a matter of days and maintained for up to 25 years whereas their unregistered counterparts in Europe and the UK last up to 3 years or 15 years, respectively. A European design registration is effective throughout the entire European Union.
In addition to meeting minimum presentational standards, to be registered a design must be new and have “individual character”. Both these criteria are judged with reference to designs which have been made available to the public (i.e. published or used) before the filing date of the application. Whilst no examination is performed in respect of the novelty and individual character requirement, the validity of a registered design can be challenged by third parties.
An application for a registered design must include drawings or photographs showing up to 7 views of a design. It is essential that the drawings or photographs accurately reflect the product (or part thereof) to be protected. For this reason, it may be advisable to delay the registration process beyond the prototyping stage until the product development process has been completed. Our attorneys have specialist knowledge and years of experience in this area. That, together with our affiliation with professional illustrators, means that we can handle all aspects of the design registration process.
It is good practice to register a design as soon as possible after the design has been finalised. However, there are limited circumstances in which it is possible to “test the market” by publically disclosing or selling a product embodying the design up to 12 months prior to applying for registration. If not administered properly, this approach can have unintended consequences and we therefore strongly recommend that you contact us for advice before relying on the grace period.
Once registered a UK or European design lasts for 25 years provided that renewal fees are paid at 5 year intervals to maintain it in force. Through our affiliation with a dedicated renewals provider you gain access to highly competitive volume-based supply costs which are usually the exclusive reserve of corporations with very large registered design portfolios. We can take the hassle out of the time-consuming yet essential task by offering you access to a fast, secure and intuitive on-line renewals portal.
A registered design can have significant deterrent value against potential copyists. However, if you believe that your design is being infringed our attorneys will recommend the most appropriate actions and take swift and effective action on your behalf. Equally, if you are accused of infringement, or your ownership of a design registration is disputed, we can assess the matter and help negotiate a settlement on your behalf. This may involve taking appropriate defensive or aggressive countermeasures consistent with any commercial sensitivities and budgetary constraints.
Intentional copying of a registered design is a criminal offence in the United Kingdom. This recent change in the law provides a significant additional commercial reasons for applying to register a designs. However, it also means that businesses and individuals must be doubly sure that they are not copying designs registered by others.
For free, no-obligation preliminary advice and cost estimates relating to your new design, please Contact us.
Need more information first? Click on our Registered Design FAQs.