9 questions small business retailers need to ask lawyers about their designs 9 Questions to ask lawyers about design registration

Peter Adediran’s specialist niche area of practice is intellectual property law – both contentious and non-contentious – as it relates to digital works including trademarks;copyright; patents and database rights PAIL®Solicitors. Read more on PAIL’s ® Resource Library

If you are a small business retailer that designs or hires designers to create designs for your apparel, textiles, furniture, home-ware and gifts retail business, then design or artistic copyright and design rights are among your most valuable assets.

You can have registered or unregistered design rights. Unregistered design rights are given only to three-dimensional designs in the UK.  To protect a two-dimensional product, you must register it with the UK Intellectual Property Office .

Does your business register its designs? If not, you may want to consider doing so. It can help prevent other businesses from copying your products. If you are designing original two-dimensional and three-dimensional shapes like furniture, jewellery, textiles, gift ware and interior design accessories,then you can register your design.

Small Biz Lawyers
Small Biz Lawyers

You can register all visual aspects of a product, both two-dimensional and three-dimensional, including the shape, lines, contours, colours, texture,materials and ornamentation in the UK. For example: you can register a line drawing of a wine glass (two-dimensional) and a photograph or computer drawing of the same glass (three-dimensional).

The right to your design comes from s213 of the Copyright,Designs and Patents Act 1988.

If you don’t know much about design rights, or you’ve never got one before, it’s a good idea to visit the government website or contact an intellectual property lawyer like me. But what do you talk to him or her about?

It’s good to be prepared with some specific questions. If you don’t know where to start, keep reading. Here are nine questions you should ask an intellectual property lawyer about design rights before you create your designs.

1. What is a design right?

If you are not familiar with intellectual property law, it can be quite complex and daunting so do not be afraid to ask basic questions.After all copyright already protects designs as artistic works. Additionally, other kinds of ways of designing and decorating everyday objects applying art,or fashion or designing manufactured products – or the general design of brand and packaging – can be protected by other types of intellectual property law and/or information rights – such as passing off; trademarks; trade-secrets; confidential information all of which sometimes overlap. Indeed, where a claim can be brought under design law, or copyright law as an artistic work, practitioners bring the case under copyright law because of its stronger protection. Not understanding what design rights are and how they are useful is understandable given the complexities of the subject area.

It will be a lot harder to protect your design rights if you don’t understand the importance behind registering it, and how the registration will be useful. While you can do some research on your own, an intellectual property lawyer can help you understand the details regarding designs better which will make your registration and protection process more effective.

2. Is He or She Experienced?

Instructing a lawyer that specialises in the area of law that you are seeking advice in is important. Before moving forward with a lawyer, research what area of law they specialise in. If the lawyer you’re considering doesn’t have experience working with intellectual property, you should probably go with a specialist.

An intellectual property lawyer can help you understand the specifics of both unregistered and registered designs. That knowledge will help you decide which path to take to protect your design rights.

3. What Steps Do I Have to go Through?

You’ll need to go through various steps to register your design. Note that you do not need to register your three-dimensional designs in the UK. Copyright is an automatic right in the UK.But proving your right to the design may be challenging. The ACID is a non-profit membership organisation with a design database service. You can register with Intellectual Property Office for a £50 fee.

You need to make sure that you understand the process of registration before jumping in. Have you done a prior search? How many designs do you want to register? How do you protect your designs outside the UK? Make sure you understand each step of the design process. Why is it beneficial to register the design in the first place?

4. Does My Design Qualify?

Your design may not qualify to be registered.  In order to register a design, your design must be original. Your design must be new and have an individual character.

5. Why Should I Register My Design?

You don’t have to register your design, but there are many advantages to doing it especially if you are in a major commercial city like London, UK, in a market space in which large numbers of businesses are competing, supplying similar products and/or service, to similar customers with little to differentiate them except quality and service standards. For example :

  1. If your design is two-dimensional then it must be registered if you are going to protect your design right in the UK. Note this is not the case with EU intellectual property laws.
  2. You must prove that your design was directly copied to enforce your rights if it is unregistered.
  3. You must also keep a record that proves the date your design was created.  
  4. You may also extend your design protection to certain other countries of your design is registered.

An intellectual property lawyer can help you understand the specifics of both unregistered and registered designs. That knowledge will help you decide which path to take to protect your design rights.

6. How Long Does the protection last?

If you register your design, then protection lasts for 25 years from the filing date of your application. You may think bringing a case for design infringement is very simple, it is not. You will need to provide the actual registration or proof of authorship so that proof of ownership or management of copyright ownership of the design can be validated. Also, if your design is unregistered protection lasts for 15 years from the end of the calendar year where the design was first recorded in a design document or, if a design is made available for sale or hire within five years, ten years from the end of the calendar year that first occurred.  

Ask your intellectual property lawyer all about the process of registering your design rights. Make sure you understand the time and effort involved before you start the process. Otherwise, you may become frustrated in the future due to impatience and lack of understanding when either your registration gets rejected or you find your registration is totally useless when you need to use it to stop another business selling imitations of your products.

7. What Databases Do You Use?

A good intellectual property lawyer will check databases to assess the risk of your proposed design. He or she will make sure your design won’t be passing off or infringing similar designs.

An experienced intellectual property lawyer also understands that designs are functioning property assets which affect the bottom line of a small business and protecting them is not just a box ticking exercise.

8. What Does it Cost?

The costs of registering a design are relatively inexpensive compared to trademarks and patents. But the real value comes from considering the advantages and disadvantages of the registration process and knowing what to do when a competitor or even a trusted stockist, starts selling a product that is like your own.

9. How Can I Protect My Trademark?

There’s no point in creating a design if you’re not willing to protect it. As mentioned before designs are functioning assets. But how,exactly, can you protect it?

Other businesses may use your design, either purposely or without realising, so you’ve got to keep an eye out. They may have copied the work but did not copy a substantial part of it. There are a lot of grey areas in this area of law so having a specialist lawyer involved from creation,exploitation (licensing and selling) and protection is the best practice.

Talk to an intellectual property lawyer today

Your designs represent the personality, emotional character and purpose of your business, and protecting it is not just some boring legal bureaucratic exercise that has to be done. Keep these questions in mind, and create your own, then reach out to us to make sure you’re covering all your bases.

We’d love to help you through any design related issues you are having, whether they be contentious or non-contentious. Contact us today to get started.

By Peter Adediran
17. 12. 2018

This article deals with questions small businesses should be asking in relation to protecting their designs. If you are seeking advice on bringing or defending a copyright infringement and passing off designs claim and have read this article, you must take the opportunity to go and seek professional legal advice from a solicitor or barrister. The information and any commentary on the law contained on this web site is provided free of charge for information purposes only. Every reasonable effort is made to make the information and commentary accurate and up to date, but no responsibility for its accuracy and correctness, or for any consequences of relying on it, is assumed by PAIL®Solicitors. The information and commentary do not, and are not intended to amount to legal advice to any person on a specific case or matter. You are strongly advised to obtain specific, personal advice from a lawyer about your case or matter and not to rely on the information or comments on this site. No responsibility is accepted for the content or accuracy of linked sites.

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