Why to get your designs registered

What is a design right?

Design rights are a type of intellectual property (IP) right.

New and original designs may be protectable by design rights. Protectable designs can include products, parts of products, or even 2D designs.

The amount of creativity and originality required to qualify for design protection is lower than many would think. Design rights are by no means limited to the creative sector, and are heavily relied upon in industrial sectors too.

Design rights are some of the easiest and lowest-cost rights to obtain.

What are registered and unregistered designs?

Two main types of design protection exist in the UK: registered design rights; and unregistered design rights.

Unregistered design rights provide free and automatic protection against copying of designs.

Registered design rights provide low-cost protection relating primarily to the looks of the product, rather than whether it was deliberately copied.

The relative benefits of each type of design right are discussed below. In summary, it is almost always a better idea to choose the option of professionally-prepared registered designs than to rely upon unregistered designs.

Benefits of registered designs

No need to prove copying

When enforcing a registered design, it is not necessary to prove that copying has taken place. An infringer could be ignorant of your design registration, and yet could still be held liable for infringement. What matters is how similar the defendant’s design looks to your registered design.

When enforcing an unregistered design, however, it is necessary to prove copying. Evidence includes, for example, proof that the defendant purchased one of your products before launching their version, or the defendant’s product may look so similar to your design that it must have been a copy.

Show that you take IP rights seriously

You can mark your product as ‘registered’ if it is protected by a registered design. This provides a deterrent effect against competitors, and encourages them to give your design a ‘wide berth’ when preparing their own products.

Good registered intellectual property protection may also increase the valuation of your company, or make your design easier to sell or licence.

No need to prove that it is in force

When enforcing a registered design, the registration itself proves whether the right is in-force and hasn’t expired.

When enforcing an unregistered design, however, it is often necessary to search your archives for dated design documents to prove that the very same design was created recently enough that its protection has not expired. This causes problems because it is often hard to find a file with both a picture and a date on it.

Ownership is harder to dispute

The registered owner of a registered design is listed on the registration itself. Ownership can only be challenged by the person claiming to be its rightful owner.

When enforcing an unregistered design, however, the defendant may allege that you do not own the rights and cannot bring an action. The resulting investigation often uncovers problems with ownership.

For example, if the creator of the design was a commissioned consultant, then the consultant may own the design rather than you.

Easier and cheaper to settle disputes

Enforcing a registered design is often cheaper, faster, and less risky than enforcing an unregistered design. This is because a registered design dispute can focus mainly on the similarity of appearance, whereas for unregistered designs a large part of the dispute may focus on proof of ownership, the date of creation of the design, and whether copying can be proven.

The objective in a dispute is to achieve a favourable settlement without having to resort to filing a court claim.

Therefore, it is beneficial to minimise the uncertainty that you would win, and therefore minimise the defendant’s uncertainty that they would lose.

Longer duration of exclusivity

Registered designs last for up to 25 years.

Unregistered designs, however, only last for up to 15 years (in some cases 10 years). Further, in the last 5 years you must give a licence of right to anybody who asks, in exchange for a fair royalty.

Ability to protect two-dimensional designs

Registered designs can protect 2D designs including playing card designs, shirt motifs, graphical user interfaces, and much more.

Unregistered design rights, however, cannot protect 2D designs.

Protection in multiple countries

Registered designs can be protected in other countries via an International design application, or by filing registered design applications in individual foreign territories.

The whole of the EU can be protected by a single EU registration called a ‘Registered Community Design’.

Unregistered design rights, however, may be limited to a single territory. For example, a UK company may only benefit from UK unregistered design protection.

Volume discount for registering multiple designs

The official fee for registering 50 designs is only three times the cost of registering a single design. Further, each of the 50 designs could relate to different types of products.

Our professional fees are also significantly reduced for each additional design that is registered.

Control over scope of protection

When we register a design, we instruct the professional design illustrator to control the breadth of the scope of protection.

For example, if you sell teapots and have improved the shape of the spout, we can ensure that the illustrations claim only the new spout and disclaim the rest of the teapot.

This makes it possible to enforce your design against teapot companies based on how similar their spouts look to your registered design, regardless of what the rest of the teapot looks like.

We can also ensure that the drawings protect the spout in any colour or texture.

This level of broad protection is unlikely to be possible if you rely upon unregistered design rights or if you simply register a photograph of your teapot.

Benefits of unregistered designs

Unregistered designs do have benefits.

Unregistered designs are often relied-upon in fast-moving industries, such as fast fashion, in which many hundreds of designs are created for each season and are then discarded.

When enforcing registered designs, there may also be a case for unregistered design infringement, to provide an additional chance of success. Therefore, it is always worthwhile keeping dated design documents in your archives – you may need to rely on them one day.

How can we help?

Our chartered patent and trade mark attorneys are also experienced design attorneys. We have filed thousands of registered designs, and are very active in both enforcing and defending in registered/unregistered design disputes.

If you have any queries, please speak to your usual contact at Swindell & Pearson, or get in touch with Tim Gilbert, the author of this article.