Using design rights to protect your intellectual property

February 2020

Using design rights to protect your intellectual property

When talking about intellectual property, entrepreneurs, researchers and inventors often ask about the process of patenting their invention or idea. What is not as widely known is the importance of making sure any available design rights are also used to add value to your intellectual property.

What are design rights?

On the face of it, design rights are a simple concept. They provide protection for a product’s physical appearance, as opposed to the way it works (which may instead be protected by a patent). A design may be protected if it is new and has individual character compared to designs that are already in the public domain.

Decorative patterns, lines, contours, texture, colour, shape and/or the configuration of the whole or part of a product may potentially be protected using design rights. However, a strong strategy requires careful thought about what aspect(s) of the product to best protect and what may work best for your business.

Which design rights are right for your product?

Broadly, there are two types of design rights available: unregistered and registered. As explained further below, the scope of protection and criteria for infringement is different between unregistered and registered design rights.

Both unregistered and registered designs are available in the UK only or across the European Union (known as community designs). After 31 December 2020, registered or unregistered community designs designating the EU may no longer be valid in the UK. However, these rights will be immediately and automatically replaced by UK rights. As more details emerge during this transition period post-Brexit, we will issue updates regarding how best to proceed with design rights.

Which design rights you choose to rely upon may depend on your budget and which territories may be of most importance for your business.

What are unregistered and registered design rights and how do they work to protect your intellectual property?

Unregistered design rights

UK unregistered design rights arise from the creation of a design and provide some exclusive rights against copying. UK unregistered design rights cover any new design of the whole or part of an article (providing it is not commonplace in the relevant technical field). This protection remain in place for a maximum of 15 years from first recording (or making) the design, or 10 years from date of first sale. However, UK unregistered design rights do not cover any surface decoration and certain further exclusions apply.

Unregistered community designs arise automatically when the design is first made available to the public within the EU and last for three years. Unregistered community designs protects the appearance of the whole or part of a product. Whilst certain exclusions apply, unregistered community design protection extends to surface decoration. Unregistered community designs may cover any novel design that possesses individual character.

Importantly, it is necessary to establish that the design has been copied in order to successfully enforce an unregistered UK or Community design right. Unregistered design rights therefore do not provide protection against another person independently coming up with a similar design to yours and bringing it to market.

Registered design rights

A registered design gives the owner a monopoly on the design, i.e. a right to stop others from making, using, selling, importing or exporting the registered design irrespective of whether they copied it. In some instances, a registered design may therefore act as a stronger deterrent as compared to unregistered design rights, as there is no burden on the holder to prove that the design has been copied. It may also be easier to sell or licence a registered design to a third party, thus generating extra income for a business.

Unlike any unregistered design, documents relating to the design will need to be filed with the relevant government office. For example, a registered design can be obtained via the UK Intellectual Property Office (UK-IPO) and/or via the European Union Intellectual Property Office (EU-IPO). The application process is similar for either UK or Community designs and is quicker, cheaper and more straightforward as compared to the process for obtaining a patent. Either UK or Community designs may give you protection for up to 25 years, upon payment of renewal fees at five-yearly intervals.

In order for a registered design to be valid, the design must be new and possess individual character. For example, a design may possess “individual character” if it leads to a different overall impression on the informed user as compared to a prior known relevant design.

To help maximise the value of a registration, it is important to consider what aspects of the products appearance should be represented in the registration documents. A single product may be protected by a number of different design registrations. We can assist with all aspects of filing an application and obtaining a registered design on your behalf.

For example, we can assist in preparing line drawings to help capture the most important features of the design. We can help make sure that the most important features of the design are captured in the design registration to maximise the scope of the protected design and help make it easier to enforce the design against any potential infringes.

Overall IP strategy

Design rights and patent protection often go hand in hand. A strong IP strategy may rely on a combination of different forms of protection including registered and/or unregistered design rights.

A strong IP portfolio may be used add value to your business. The success of your business can depend on the strength and effective protection of its intellectual property. Design rights may help an owner to distinguish its brand from the competitors and market the brand and business accordingly.

To be effective, your IP portfolios must be well managed. Our highly trained and experienced attorneys can help - get in touch with one of the team to find out how.

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