How do I Protect my Design? Design Rights
A new product or packaging design can be incredibly valuable to a company as they enter into their marketplace. But, how do you protect designs?
What is a design?
A "design" can commonly refer to a plan or drawing produced to show the look and function or workings of a building, garment, or other object before it is made.
The word design can also refer to the resulting designed object in its 3D form.
In the legal sense, a "design" refers to a product in its general shape and ornamentation that is applied to it. As such, "designs" and design rights are more broadly concerned with the appearance of an object, as opposed to how it functions or operates.
What are the kinds of protection available?
Designs are protected by design rights.
Similarly to copyright, there is an automatic, unregistered design right (UDR) which offers a limited degree of protection over an original design at the point it is created.
Unlike copyright, you can also register a design to achieve strong protection against people copying or appropriating the design. This is called a registered design right (RDR)
There are some differences between unregistered and registered designs. In addition to this, there are differences in the amount of protection offered by UK UDRs/RDRs and Community Design Rights that protect a design across Europe. These differences are explained in more detail later in this FAQ.
What can be protected by design rights?
Characteristics that come under the protection of both types of design rights can include:
- The physical appearance
- The physical shape
- The configuration or how different parts of a designed are arranged together
- The decoration of the object
Design rights prohibit a third party from copying the design.
In addition to this, it may also prohibit associated acts such as possession, importation, sale etc. should the person involved be able to be proven as knowledgeable the infringing design.
What do I gain from registering my design
Generally speaking, registering a design grants the designer a longer duration and depth of protection over their design.
This is achieved at a relatively low cost, per design. As such, it is broadly a good idea for designers to register their key designs.
More details about the difference between registered design right and unregistered design rights can be found below - alongside the differences between the UK and EU design rights.
In the UK, registering a design grants the owner absolute monopoly over the use of the design for 5 years after it is put onto the market. For years that follow when the design right is renewed, an infringer or other part can obtain a compulsory license from the rights holder. For more information about this contact a design rights specialist.
What can I register?
To register a design according to the UKIPO, it must:
- Be an original, new design
- Not be offensive (for example feature graphic images or words)
- Be your own Intellectual Property
- Not make use of protected emblems or flags (e.g. Olympic rings or royal crown)
- Not be an invention of how a product works
What is a registered design right?
Registered design rights are exclusive rights in the visual appearance of the whole, or part of a design when applied to a functional object. There are some aspects of a design that receive stronger protection under an RDR, which are not as strongly protected in the unregistered right.
This can include things such as:
- The surface texture of the design
- The colour of the design
What are the differences between the types of design right?
For the purposes of this FAQ, there are four main types of design right.
Unregistered UK Design Right
- Only enforceable in the UK
- Must prove that design was directly copied to enforce
- 15 years protection, or 10 from the point when the product is first put on sale, whichever is the shortest
- No renewal or registration required
Registered UK Design Right
- Only enforceable in the UK
- Less of a requirement to prove design was directly copied
- Protects the overall appearance of the design minus features that are dictated by a technical function
- Protection lasts 25 years from the date of filing
- Renewed every 5 years, to a maximum of 25 years
Unregistered Community Design
- Only enforceable in EU member states
- Protects "the appearance of the whole or part of a product resulting in features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation".
- Offers protection for 3 years.
- Can only prevent others from use if use results from copying
Registered Community Design
- Only enforceable in EU member states
- Protects "the appearance of the whole or part of a product resulting in features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation"
- RCDs entitle holders to "exclusive rights to: use, make, offer, put on market, import, export or stock products incorporating the protected design, and prevent others from doing so with products incorporating the protected design and that do not produce a different overall impression".
- Renewed every 5 years to a maximum of 25 years
- Can prevent use if design infringes by has been created independently by a second design
If you wish to know about how designs are protected outside of the UK or EU, please get in touch with our team to find out more.
What do I do if I think somebody has copied my design?
To begin you must ensure that you have documented (or at least recorded) the development of your design.
With ideas in and of themselves actually not being subject to protection, you need a physical manifestation or recording of the design which stands as evidence of your authorship.
At the point where infringement is suspected, it is advisable to contact a solicitor with expertise in enforcing design rights. IP and design right experts will be able to assess the infringement and establish your best course of action.
Remedies that can be achieved include stopping the infringement and receiving remuneration.
If you need help enforcing a design right, click the button below to get in touch.
How do I know when my design infringes someone else's?
It may also be the case that you are accused of infringing on someone else's design.
If this is the case you should gather up any information you have about the creation of your design, as well as the claim that has been made against you and contact a design rights specialist in order to identify the strength of the claim made against you.
If you need help defending a design right claim, click the button below to get in touch.
How do I register my design?
You can register your design through the official GOV.UK website.
However, it is important to note that the way that you prepare your design for manufacturers will not necessarily be the best way to represent your design for the registration process.
Many people get it wrong and unless the correct information and drawings are submitted, the design right is worthless as it isn't checked or examined until the point that an infringement action takes place - by which time it is too late.
To be clear: it is not a good idea to submit a generic design for registration as, whilst it may be fit for purpose in getting the design manufacturers, it will likely not be recorded in a way that actually protects the key elements of the design under the relevant law.
By contacting a design right expert, an optimized design right registration can be submitted to the IPO which protects the key elements of the design that you wish to protect, in line with the relevant law.
Get in touch with our team by clicking the button below for assistance.
DISCLAIMER: The content within this post is for educational and entertainment purposes only. Virtuoso Legal does not take any responsibility for those that use this information and waive any liability for any resulting effect on your personal or commercial circumstances. If you are experiencing an issue and need advice, we strongly encourage you to contact a solicitor to identify your best course of action.