Design rights registration
PAIL® Solicitors intellectual property lawyers give a basic explanation of design rights and design rights registration in the UK, EU and US
A design is a product’s appearance. The look and feel all count towards the design. The design has to be novel to qualify as a new design.
Design Rights Registration – Ownership
Generally, the design is owned by the creator except if it were created by an employee whilst working. A commissioned design may also have to be assigned for ownership to be transferred.
Unregistered design rights
You can have registered and unregistered designs. Unregistered design rights like copyright are automatic. They focus on the construction of a product i.e. the shape, contours etc They are a property right like copyright and can be licensed and assigned as such. Unregistered designs are protected for 10 years.
Registered designs are protected for a lot 25 years in the UK and EU. They are administered by the IPO in the UK. This prolonged duration of protection is the main advantage over an unregistered design. Registered designs are administered by OHIM in the EU. In the United States designs are protected as part of the patent system. So you have so called design patents US Design Patent Guide. The definition of a design in the US according to the United Trademark and Patents Office is:
“A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture.”
The difference between copyright and design rights
You can use copyright to protect a design but you cannot use design rights to protect something that should be protected by copyright. Literal and artistic works are protected by copyright. So any design notes will be protected by copyright and text and artistic works in the finished design.
So how do you get your designs ready for UK registration?
Here is what you have to do. There is no UK electronic filing system for designs as at the time of writing so the application has to be done by post or fax.
1. You need to send us, or the legal representative you choose to assist you (or you might choose to apply yourself direct to the IPO), by post representations of all your designs, along with a description on a separate sheet of A4 of what each design is i.e. 1 of 40 Male Canvas Holdall; 2 of 40 Patchwork Cross Body Female Handbag etc. The representations must be any of the following: (A) line drawings (B) CADs’ (computer software generated images) or (c) photographs. *NB You cannot use all 3. You can only use one of the 3 types of formats per design.
2. The representations must show the design as it appears to the eye.
3. The representations must show the design in isolation e.g. with no other designs or background.
4. The representations must be printed on plain A4 paper.
5. Do not include any technical detail such as borders/labelling/dimensions.
6. Show at the minimum the rear view, front view, and side view of the design.
7. The only text allowed on the representations are the view designations i.e. front, back, side view (you must use the same format i.e. photograph, CAD, or line dra wing) for each design.
In the UK, it takes 3 months to get a design registered. Two months processing one month registering. The UK fee calculator can be found at https://www.gov.uk/government/publications/design-application-fee-calculator. The EU fees calculator is here http://oami.europa.eu/en/design/fees.htm.
To book a face to face consultation for commercial legal advice you should contact a specialist intellectual property lawyer (charge rates may apply and may vary).