Often, when looking to protect inventions or ideas, inventors seek patent protection as a first port of call. However, inventors often overlook the importance of obtaining design rights which protect the appearance of a product or invention, rather than the technical features of an invention. Design rights can be used to provide complementary protection alongside other intellectual property (IP) assets, providing you with holistic protection and assist in safeguarding your innovations.
What types of design rights are available?
Designs can be protected in the UK and Europe through either unregistered or registered design rights, which differ in how you obtain the rights, their scope of protection and the acts that constitute infringement.
Unregistered designs
In the UK, unregistered design rights arise automatically when the design is created and protect the shape, configuration, and appearance of a product. To be eligible for unregistered design protection in the UK, the design in question must not be commonplace in the relevant technical field. Unregistered designs provide the owner with the right to prevent copying of the design and the unauthorised dealing of an infringing article. The term of an unregistered design in the UK depends on the specific type of design. For unregistered designs directed towards the shape and configuration of a product, unregistered design protection lasts for either 15 years from the creation of the design or 10 years from the date the product is first sold, whichever ends earlier. For unregistered designs directed towards the appearance of a product, unregistered design protection lasts for 3 years from the date the design is made public.
In Europe, unregistered designs are known as ‘unregistered community designs’ and similarly to the procedure in the UK, no formal registration of the design is required as the right arises automatically when the design is first made available to the public within the Community. This occurs when the design is published, exhibited, used in trade, or otherwise disclosed in such a way that, in the normal course of business, the design would be known by the interested circles of the specific sector concerned within the European Union. The unregistered community design protects the appearance of the whole or part of a product, however it must be novel and possess individual character. Thus, in contrast to the requirement in the UK that the design must not be commonplace, the European unregistered community design places more stringent requirements on what designs will qualify for protection. Furthermore, the term of the unregistered community design is three years from the date the design is first made available to the public within the community.
If you wish to assert an unregistered design, you must be able to provide evidence of when the design was created. Thus, it is critical that records of signed and dated copies of any design drawings are kept. Furthermore, not all jurisdictions acknowledge unregistered design rights and thus it is advisable to actively register any designs in the jurisdictions that are key to your business.
Registered designs
If a more thorough protection of a design is desired, then a registered design may be more suitable as this provides the owner with a monopoly on the design enabling them to stop third parties from using the registered design whether they copied it or not. In contrast to that of unregistered designs, to obtain a registered design there is a formal registration process.
In the UK and Europe, registered designs protect the appearance of a product that results from its features, including the lines, contours, colours, shape, texture, materials, of the product or its ornamentation. Registered design protection in the UK and Europe lasts for a maximum of 25 years, which is significantly longer than that of unregistered designs. For a design to be registerable in the UK or Europe it must be novel and possess individual character. In direct contrast to patent rights, the requirement of novelty for UK and European registered designs is not absolute as the UK Intellectual Property Office and the European Union Intellectual Property office both provide a 12-month grace period in respect of registered designs which discounts some specific types of disclosure. This grace period may be useful to applicants who place a product on the market to assess its success before obtaining IP protection. However, it is important to note that not all jurisdictions recognise grace periods.
In comparison to other forms of IP obtaining registered design protection is often considerably cheaper and a much quicker, more straight-forward process. Whilst patent applications usually take several years to proceed to grant, UK and European Community registered design applications often proceed to grant in around a week. Thus, obtaining a registered design directed towards your product may be a useful addition to your design portfolio to protect its appearance whilst the patent directed towards its technical features is pending.
The attorneys at Secerna LLP have in-depth experience of filing and prosecuting registered design applications in the UK and Europe, as well as various overseas jurisdictions, and can assist you with any design related matters.