Design Protection - worth another look
August 01, 2011
New designs for industrial products are, in many cases, automatically protected against copying by virtue of unregistered design right and in some instances copyright.
Significant additional protection may be obtainable by registration of the design. New surface patterns, or decorations or other 2D designs may be protectable by design registration and may have automatic protection against copying by virtue of Community unregistered design right and/or copyright. The shapes of products may be protectable by design registration and may have automatic protection against copying by virtue of U.K. or Community unregistered design right. Principal features of each of these types of protection are given below. In view of the complexity of this area of law we recommend that specific advice be sought from us in any particular case.
A design registration can protect designs in the form of a shape and/or pattern applied to a product, or a 2D design such as a new logo or incon. A registration is not restricted to a particular product, such that the registration would cover application of the design to a variety of products. Registrations may also be directed to the design of specific parts of products, as long as that part is ordinarily on view in use. Designs wholly dictated by function are not registrable, and designs are required to have ‘individual character’ in relation to previous designs to be validly registrable. There is no protection for features of the shape of an article which are dependent on the appearance of another article of which the first article is intended to form a part. The protection afforded by a registered design is infringed by sale or commercial use of an article having a substantially identical design, whether or not the registered design has been copied. This means that it may be easier to enforce registered design protection relative to unregistered rights. The term of protection is initially 5 years, but is extendible by payment of renewal fees for further 5 year periods, up to a maximum term of 25 years. These advantages over unregistered design right and copyright make design registration worthy of consideration in appropriate cases. In the European Union a valid application for registration can be filed up to a year after a design has first been publicly disclosed, though it is highly advisable for applications to be filed as soon as possible. In order to file an application for design registration we require drawings (preferably) or photographs showing the design from all aspects. Applications can be filed for a national U.K. registration or a Community registration. Whilst a Community registration is more expensive, it is a very cost effective way of obtaining coverage across a number of countries. A number of designs can be included in a single U.K. or Community application, thereby providing a cost saving relative to individual applications. By virtue of International Agreements, applications for design registration abroad can in most cases be backdated to the date of an initial U.K. or Community application for registration of the same design, if filed within 6 months of the initial application date.
Unregistered Design Right
As the name suggests, this type of protection arises automatically in appropriate circumstances, without any requirement for registration. It is a protection against actual copying only. Two types of protection are available, U.K. national and European Community. U.K. national design rights only protect features of shape or configuration of an article, or part of an article. There is, however, no protection for features which enable an article to be connected to another article, or which are dependent upon the appearance of another article of which the first article is intended to form a part. Surface decoration is also excluded. U.K. unregistered design right has a duration of 10 years from the end of the year of first sale of the article, subject to an overall maximum of 15 years from the end of the year in which the article was designed (if no articles are sold within 5 years). In the last 5 years of protection any party is entitled to a licence to make the design. The terms of such a licence are settled by the Patent Office if not agreed between the parties. In contrast Community design rights cover any two or three dimensional designs for which a valid design registration could be applied for. This right only lasts for 3 years from when the design is first made public in the European Economic Area. Copyright Three dimensional industrial designs do not normally qualify for copyright, but copyright will subsist in surface decoration to be applied to such articles. Protection is automatic, but is only infringed by copying. The term of copyright in these circumstances, at least in the U.K., is 25 years from the end of the year in which the articles are first marketed. For further information concerning design protection please contact Robert Sales [email protected] or your usual contact at Swindell & Pearson Ltd.
Swindell & Pearson has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 130 years. With its head office in Derby, the firm also has offices in Stoke, Wolverhampton, Stafford, Sheffield and Burton. To find out how Swindell & Pearson can help you with any intellectual property requirements please get in touch via [email protected] or by telephone on 01332 367 051.