UK Registered Design Right Protection

Introduction:

Design protection grants exclusive rights to the appearance of a product, preventing others from copying its unique visual features, such as lines, colors, contours, shapes, textures, and materials. The protection can last for up to 25 years and can safeguard distinctive visual identity.

This article aims to explore the key aspects of UK registered design rights, as governed by the Copyright, Designs and Patents Act 1988 (‘CDPA’), an important form of intellectual property (‘IP’) protection.

A Registered UK Design Right:

A UK registered design right protects the appearance of the whole or a part of a product arising from lines, colours, contours, shapes, textures or materials of a product or its ornamentation that forms part of the visual appearance of the product as a whole or in part.

It is a separate intellectual property right from patents, trade marks, and copyright; hence, it seeks to provide an alternative form of IP protection.

There are two main requirements for a design right to be validly registered:

1. Novelty – the design is new as compared with previous designs, differing by more than just immaterial details; and
2. Individual character – the design imparts a unique overall impression to an ‘informed user’ that confronts the design considering the degrees of freedom which apply to a specific design.

If these criteria are met, then the design may be prima facie (in the first instance) registrable as a registered design right.

Exclusions:

Certain designs are excluded from registration to maintain the balance between design protection and other forms of IP rights, functional and market needs.

• Solely Dictated by Technical Function – a design is excluded from registration if its features are dictated solely by its technical function. This ensures that design protection is not used to monopolise technical solutions. A question to consider is whether other designs are available, or if this is the only possible design for the product to function technically;
• Complex Parts Not Visible – designs applied to parts of a product that are not visible during normal use are excluded from design protection. This ensures protection applies only to the visible aspects of a design (see Complex Parts, below);
• “Must Fit” Exclusion – a design that is solely dictated by the need to mechanically connect or match with another product (e.g., interlocking components or connectors) cannot be registered. This ensures functional or utilitarian designs remain free from monopolisation; and
• Offensive Designs – A design that is considered offensive may be excluded from protection under the CDPA. Additionally, case law suggests that designs contrary to morality or public order may also be excluded, ensuring that protected designs align with societal values and norms. For example, designs incorporating Olympic symbols or National Flags are excluded from registrability under specific legislation.

How to file:

To file an application for design registration in the United Kingdom, you can apply online through the UK Intellectual Property Office (UKIPO).

The online application process is efficient and allows you to submit your design illustrations and pay the necessary fees electronically.

A single design application typically allows for up to 12 representations of the design. Alternatively, you can file multiple design applications, which allows for up to 50 designs in a single application, and which can be more cost-effective.

Applications are filed via Form DF2A.

When filing graphical representations of your design, it is crucial to understand the following:

• Line Drawings protect the shape of the design; and
• Textured CAD Drawings interpret the surface appearance of the design (as clarified in the Trunki case discussed below).

Note: You cannot include both types of drawings in the same application. To protect both shape and surface appearance, you would need to file separate applications, which could be divided at a later stage if needed.

The filing date is when your application is submitted, but the registration date is after examination and only when the design is approved, i.e., registration does not occur on the filing date.

For detailed guidance on the application process and to access the online application portal, please visit the UK IPO’s official website here [1].

Further, the forms and fees for applying for a registered design can be found here [2].

Trunki case:

In 2016, the UK Supreme Court recently ruled that a series of animal-themed ride-on suitcases (the Kiddee Case) did not infringe a Community Design Registration for the well-known Trunki suitcase. This ruling came despite the Kiddee Case being quite similar in design to the Trunki and having been developed as a cheaper alternative.

The Trunki’s protection relied on a European Community Design Registration, which was based on CAD images of the Trunki in greyscale, highlighting a strap, wheels, and strips in darker shades.

The Supreme Court determined that the registration was not solely for the shape of the suitcase, but also included design elements such as the strap, wheels, and contrasting colours.

This interpretation narrowed the scope of the registration, contributing to the decision of non-infringement.

If the registration images had been simpler, such as using a single shade of grey or black and white line drawings, the outcome may have been different.

This case emphasises the importance of carefully selecting the images for graphical representations used in design registrations.

By including unnecessary features such as colour, shading, or surface decoration, the registration can be unintentionally limited in scope of protection, as the Trunki case has demonstrated.

Scope and Infringement:

Once a registered design is granted, the proprietor has the exclusive right to prevent others from making, disposing of, offering to dispose of, using, importing, exporting, or keeping a product that embodies the design without their consent within the UK.

However, enforcement cannot begin until the design is officially registered (or entitlement proceedings are concluded). While copying a registered design is a criminal offence, no criminal sanctions apply if the copying occurs before the design is registered.

The scope of protection for a registered design is not limited to the specific product to which the design is applied. Instead, it is the design itself that is protected.

A design is considered to infringe if it differs from the registered design only in immaterial details or if it imparts the same overall impression to an informed user when compared with the registered design.

Infringing acts include making, disposing of, offering to dispose of, using, importing, exporting, or keeping a product that embodies the design.

However, once rights are exhausted in the EEA, importing and exporting are allowed—except after 31.12.2021, when such actions may be restricted.

A registered design is a monopoly right, meaning there is no need to prove copying to establish infringement.

Intentional copying of a registered design for commercial use is a criminal offence. However, infringement of a registered design right does not require proof of copying; it is sufficient to show that the infringing design creates the same overall impression as the registered design.

Defences:

In the UK, defences to the infringement of design rights can include:

• Private and Non-Commercial Use: Designs used privately and not for commercial purposes are generally exempt from infringement claims.
• Repair: The use of a design in the repair of a product to restore it to its original appearance is not considered infringement.
• Innocent Infringement: If an alleged infringer can prove they were unaware of the design right and took reasonable steps to avoid infringement, they may have a defence.
• Parallel Imports: If the design has been lawfully marketed in another jurisdiction, importing and selling those products may not constitute infringement in the UK.
• Use of the Design for Experimental Purposes: Similar to patent law, using the design for experimental purposes can be a valid defence.

In addition, an alleged infringer may counter-claim that the registered design is invalid, according to one of more grounds of invalidity.

Invalidity:

A registered design can be declared invalid for several reasons:

• Lack of Novelty or Individual Character: If the design lacks novelty or individual character, i.e., it does not impart a unique overall impression to an informed user, as compared with prior designs, then it may be considered invalid.
• Includes Excluded Subject Matter: Some designs, such as those that are purely functional or use common shapes or features, may not be eligible for protection.
• Invalid Appearance: The design does not relate to the appearance of the whole or part of a product arising from lines, colours, contours, shapes textures, or materials of a product or its ornamentation.
• Ownership and Entitlement Issues: If the person who registered the design was not the rightful owner or lacked the proper entitlement to register it, the design may be invalid.
• Includes a Trademark or Copyright: If the design includes elements that relate instead to trade marks or copyright, there may be grounds for invalidity of the registrability of a design.

Term:

The term of protection for a registered design right is up to 25 years from registration, renewable four times every five years. There is a 6-month grace period after the renewal date to renew, and failure to renew on time will result in a loss of rights notification being issued. The design right can be restored within a further 6-months thereafter, provided the proprietor can show that failure to renew was unintentional.

However, a third party may accrue third party rights if they can show serious and effective preparations in good faith, which are continuous, in relation to the design after it lapsed and before it was restored. These rights enable the third party to continue using the design but within a limited scope—meaning they can only continue the same activities they were undertaking before the restoration.

Ownership:

The first owner of a design is typically the designer. However, if the designer is an employee, the ownership may automatically belong to the employer depending on the terms of their employment contract.

• In cases where the designer is not an employee—such as when the design is commissioned externally—the rights must be assigned to the new proprietor.
• If the proprietor is not the designer, such as in commissioned designs, the rights must be formally assigned. This means that the ownership of the design must be formally transferred through an assignment if the proprietor is not the designer.

When a registered design right is assigned to a new owner, the transfer must be documented in writing and signed by both parties. To officially record the change of ownership, license, or security interest, Form DF12A, here [3], must be filed with the UK Intellectual Property Office (UKIPO).

This ensures that the UKIPO’s records reflect the updated ownership or rights, which is important for legal enforcement.

Disclosure:

If a design is disclosed in such a way that it reasonably becomes known in the normal course of business to specialised circles in the relevant sector within the UK and EEA before the registration date, there is a 12-month grace period to file an application to register the design. Importantly, this grace period does not apply to disclosures made in confidence, as these are not considered public disclosures. However, if there is a breach of confidence and the design is disclosed, it is treated as a public disclosure, and the designer may still file an application within 12 months of the breach.

In Europe (i.e., Community Registered Designs) and in the US, the grace period is also 12 months, aligning with the UK and EEA. However, in other countries, the grace period varies: for example, Japan, India, Australia, and Korea allow a 6-month grace period, while China does not provide any grace period at all.

To avoid risks, it is advisable to either register the design before disclosing it or file for registration promptly after disclosure has occurred. During the grace period, there is always a risk that a third party may independently conceive the same design i.e., which imparts the same overall impression on an informed user (without copying it) and register it first.

Prior User Rights:

If a person can demonstrate that they have made serious and effective preparations in good faith, which are continuous, in relation to a design before it was registered by another party, then they may be entitled to prior user rights. These rights enable the third party to continue using the design but within a limited scope—meaning they can only continue the same activities they were undertaking before the registration.

It is important to note, however, that prior user rights cannot be assigned to another party. However, they may be transferred as part of a sale or transfer of the relevant parts of the same business.

Priority:

A 6-month priority period for designs applies to countries that are signatories of the Paris Convention for the Protection of Industrial Property. This means that after filing a first design application, the proprietor may file a subsequent application in any member country within 6-months, while retaining the original filing date of the first design application.

For example, an applicant may file a Community Registered Design claiming priority from a UK registered design application within 6-months, thereby extending the geographical scope of protection as well as the term of protection by 6 months.

The 6-month priority period for design registrations offers several benefits:

1. Global Protection Strategy: The priority period allows the design proprietor to file subsequent applications in other countries while retaining the original filing date. This helps ensure international protection based on the initial application date.
2. Time to Assess Markets: It gives the proprietor time to assess market conditions or whether the design will be commercially viable before committing to filing in other jurisdictions.
3. Increased Legal Certainty: By securing the priority date, the design proprietor ensures that no one else can file a similar design in the interim period, protecting their rights against potential competitors.
4. Cost-Effective: The priority period allows businesses to plan and coordinate multiple applications in different countries, which can be more cost-effective than filing in each country without the benefit of the priority date.
5. Market Expansion: The period provides flexibility for businesses to expand into new markets without losing the protection granted by the original filing date.

Complex parts:

A complex part design consists of two or more replaceable parts, such as serviceable components. Protection under a design right only extends to parts that are visible during normal use by an end user, rather than by a service provider. If the parts are intermittently visible, this is also considered as allowable for registration purposes.

Conclusion:

In conclusion, a UK registered design right offers valuable protection for product appearances, ensuring designs that meet the criteria of novelty and individual character are safeguarded from unauthorised use. A UK registered design right grants exclusive rights to prevent others from using or selling products that embody the design, without the need to prove copying.

However, it’s important to note that holding a UK registered design right does not preclude the possibility of also holding a UK Unregistered Design Right. In fact, the two can co-exist, with the unregistered design right potentially acting as a supplementary right.

A UK Unregistered Design Right may provide protection specifically for the shape or configuration of a product, as long as it has been recorded or an article embodying the design has been made available to the public in the UK. The supplementary unregistered design right, introduced post-Brexit, applies more broadly to the overall appearance of a design made public within the UK.

For more information on the specifics of UK Unregistered Design Rights, please refer to our upcoming article on Unregistered Design Rights. By understanding both registered and unregistered design rights, designers can ensure comprehensive protection for their creations in the UK.

R is for Registered Design Rights – Protect your creativity with timely registration!

References:

[1] Register a design – https://www.gov.uk/register-a-design

[2] Design forms and fees – https://www.gov.uk/government/publications/design-forms-and-fees/design-forms-and-fees

[3] Record/cancel a change of ownership, licence or security – https://www.gov.uk/government/publications/recordcancel-a-change-of-ownership-licence-or-security

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