UK design law protects the appearance and shape of whole products or parts of products e.g. its shape or decoration.
If a design meets certain criteria, the owner of the design is entitled to unregistered design right. This is an automatic intellectual property protection which applies to original, non-commonplace designs, protecting the design from being copied.
Whether it’s a floral or decorative pattern, a computer icon or the specific shape of a product and its packaging, designs are protected to ensure the owner of the design reaps sufficient reward for their efforts.
Aside from unregistered design right it’s also possible for designers to secure a higher level of protection by registering the design with the UK Designs Registry.
Choosing between unregistered and registered design rights
Which one applies to my design?
In the UK, unregistered design right is given only to three-dimensional designs. In order to protect a two-dimensional design, the Intellectual Property Office (IPO) states that you must apply to register it with the UK Designs Registry. That’s despite the fact that EU intellectual property laws cover both two and three-dimensional items.
Which one provides the cover I need?
In the UK, unregistered design right protects the shape and configuration of products, both internally and externally. A registered design protects the complete appearance of the product; including its lines, contours, colours, materials, texture and shape. Interestingly, EU intellectual property law dictates that unregistered design right covers a product in its entirety.
How soon can I protect my design?
Providing your design meets the following criteria, as stated by the IPO, you’ll be given unregistered design rights automatically:
It’s an original design – one that’s all your own work
It’s a design that’s non-commonplace – not widely acknowledged within groups of comparable products
If you’d prefer it to be a registered design – covering its appearance, physical shape, configuration and decoration – the IPO states that the UK design registration process takes up to one month, providing it meets the following criteria:
The design must be new
The design cannot be offensive (it cannot feature graphic imagery or words)
It cannot utilise protected flags and emblems (e.g. the Royal Crown or the Olympic rings)
It cannot be an invention (a patent would be needed to protect this instead)
How long am I protected for?
In the UK, unregistered design right lasts for up to 15 years in the UK and three years in the European Union. By contrast, a registered design is protected for up to 25 years in the UK, subject to the protection being renewed every five years.
In the last five years of any unregistered design right you must give a licence of right to anybody who asks. The IPO outlines how you can apply by design right or copyright owner to vary the terms of licence of right.
How do I enforce an infringement?
The IPO says that it can help with some design right disputes, but also advises design right owners to seek professional advice to take legal action in the event of an infringement.
The crucial difference between enforcement of unregistered design right and registered design right is that you don’t have to prove that an infringement was deliberate for the latter. Unregistered design right holders looking to prosecute for an infringement must be able to prove that a) you created the design in the first place and b) deliberate duplication has occurred.
How much of a deterrent are they?
Unregistered design rights can sometimes be difficult to prove and tend to have shorter shelf lives. Some businesses do prefer unregistered design right however, simply because registering a design can be costly and slower in comparison with the speed with which they develop new products.
Take the fashion industry for example – with seasonal and ad-hoc trends, the shelf life for products and designs can last months, even weeks.
Subsequently, unregistered design right remains vital as it gives fashion brands adequate protection for three years across the European Union; which is usually ample time given how quickly they move on to the next designs and how much they would need to pay to fully register their entire range of designs for comprehensive protection.
On the other hand, a registered design is more likely to act as a deterrent as there’s no onus on a registered design right holder to have to prove infringement. It’s also an easy right to sell on or license to relevant third parties.
If you’ve got a design idea or product that you’re unsure is available or suitable to be registered for design protection, the Business & IP Centre Northamptonshire can help. Visit our events and intellectual property pages to view our upcoming events and more information on intellectual property.
This article first appeared on the British Library’s Business & IP Centre website. View here.