Designs - An overview

Rights in industrial and ornamental designs can be obtained in two ways in the UK and in Europe.

Registered designs protect the appearance of products, whether the whole of the product or part of it. A design is registered in respect of a particular product but the function or structure of the product is not material, only its impact on the eye, whether pleasing or not.

Unregistered design rights are automatic rights, rather like copyright. They apply to any industrial designs and provide automatic protection for a limited period (in the UK normally 10 years from the years of first marketing the product, although the owner has to be prepared to grant licences during the second five years of this period).

Registered designs and unregistered design rights may be used to prevent others from commercialising the protected design, whether by sale, manufacture, importation or use.

Registered designs may be obtained throughout the world and, indeed, a single European Community registered design may be obtained. Unregistered design rights apply in very few countries, although there is a very short term right applying across the entire European Community

The Registered Design process

The process of obtaining a registered design involves lodging pictures or drawings of the design at a Designs Registry (in the UK this is part of the United Kingdom Intellectual Property Office (formerly the Patent Office). Once filed, the application has to be steered through any search and examination procedures which may be involved. These are minimal in the UK and in Europe.

A design registration can be obtained within a few months in the UK, although it may take longer in other countries. In the USA, an application to protect the appearance of a product is treated as a type of patent application (called a “design” patent application as opposed to a “utility” patent application) and is subject to typical patent examination delays. The grant of a design patent in the USA may take a one or two years.

A registered design can be kept in force for 25 years in the UK and in Europe subject to renewal payments every five years. A design patent lasts 14 years in the USA, no renewals being payable.

Registered designs and unregistered design rights may be the subject of licences and transfers (assignments) between different parties.

Registered designs may be attacked and “cancelled” if they are wrongly registered, for instance, if the design is not a new one. However, there is a grace period of one year after first public disclosure within which a valid design application may be made.

Litigation of registered designs is expensive but usually disputes can be settled without recourse to the courts.