Rechtsanwalt, Partner, Head of Employment & Reward, Germany
Out-Law Guide | 30 Mar 2005 | 2:26 pm | 4 min. read
This guide is based on UK law. It was last updated in March 2018.
What is a design?
Examples of designs include floral or other decorative patterns, graphic symbols, including computer icons, the shape of products and their packaging.
Designs can also benefit from unregistered design rights. UK design rights apply to original, non-commonplace designs of the shape or configuration of products. A design right protects the design from copying.
How are designs protected?
In the United Kingdom, designs are protected in two main ways.
Certain designs may benefit from unregistered design right protection. Two forms of unregistered design right exist covering the UK. The first covers the UK only, the second is the so-called Community unregistered design right, covering the whole of the European Union (EU).
The two forms of design right co-exist, although are not identical. In essence, UK design rights protect original, non-commonplace designs of the shape or configuration of products. Community design rights protect the appearance of the whole or part of a product resulting from the lines, contours, colours, shape, texture and/or materials of the product and/or its ornamentation.
A design right is not achieved via registration; it is an unregistered right similar to copyright. It arises on the creation of the work in the UK, and for Community design rights when the design is made available to the public. Design right protects the design from being copied. Protection for UK design rights is only available to nationals or residents of the UK, EU member states or countries with reciprocal arrangements with the UK.
Countries with reciprocal arrangements with the UK currently include Anguilla, Bermuda, British Indian Ocean Territory, British Virgin Islands, Cayman Islands, Channel Islands, Falkland Islands, Gibraltar, Hong Kong, Isle of Man, Montserrat, New Zealand, Pitcairn, Henderson, Ducie and Oeno Islands, South Georgia and the South Sandwich Islands, and Turks and Caicos Islands.
Designs can be protected by registering them. Designs can be registered in the UK by application to the UK Intellectual Property Office.
Designs can also be registered in foreign countries and across the whole of the EU via a so-called 'Community Design'.
A design application must be filed, in the UK or through the Community design system, within 12 months of the first marketing of a product to the design.
What rights do I have with an unregistered and a registered design?
The owner of an unregistered design has the right to reproduce the design for commercial purposes by making a product to that design or by producing a design document recording the design for the purpose of enabling the product to be made. Infringement of the unregistered design will occur when a third party copies that design.
A registered design gives the owner a monopoly right in the design. This means that third parties cannot produce products which incorporate the registered design regardless of whether they knew about or copied the design. If a third party were to produce a product which incorporated the design in some way the registered design owner could commence infringement proceedings against them.
There are however exceptions to this general rule which provide that use of the design will not be infringement when, for example, the use was for non commercial purposes, for experimental purposes or for teaching purposes.
Why should I register a design?
A registered design offers the design owner much stronger rights than those offered by an unregistered design. A UK or Community registered design can last up to 25 years, whereas in contrast a UK unregistered design right only lasts for 10 years, with a Community unregistered design having an even shorter lifespan of 3 years.
In addition when relying on unregistered design right protection in the United Kingdom it is necessary to prove that your design has been copied, in a similar way to establishing copyright infringement. By contrast, you do not have to prove that a registered design has been copied to establish infringement.
Design registration can also be a very good complimentary form of protection to registered trade mark protection if that trade mark has a graphic element.
Further, unregistered design right protection is often limited or non-existent outside of Europe.
Must I register a design?
No, but for the reasons given above you should seriously consider registering your design. You do not have to register a design to use it. Design registrations are used to stop others using the design.
How long do unregistered design right and design registrations last?
Unregistered design right and design registrations are not perpetual rights, in contrast to trade mark registrations, which can be renewed indefinitely.
UK unregistered design right has a duration of 10 years from the end of the year of first sale of the article, subject to an overall maximum of 15 years from the end of the year in which the article was designed (if no articles are sold within five years). In the last five years of protection any party is entitled to obtain a licence to make/sell the design. The terms of such a licence are settled by the UK Intellectual Property Office if not agreed between the parties.
Community unregistered design right lasts for three years from the date on which the design is first made available to the public in the EU.
A United Kingdom or Community design registration may last for up to 25 years, but must be renewed every five years.
How do I register a design?
A design is registered by filing a design application at the Designs Office of the country or countries where you wish to trade. Community Design applications can be registered relatively quickly through the European Intellectual Property Office (EUIPO). It takes around three months to register a typical UK or Community Design application. The EUIPO also offers a 'fast track' procedure which can grant a registered design within two working days if no deficiencies are flagged.
To qualify for registration in the UK and through the Community Design Registration system, a design must be new, which means that it must not be the same as any design which has already been made available to the public. It must also have individual character which means that the overall impression it produces on an informed user of the design must differ from the overall impression produced on such a user by any previous design which has already been made available to the public. The informed user is normally a technically sophisticated user of the class of products who is neither a designer nor manufacturer.
How much does a design application cost?
The cost of registering designs varies from country to country. A design registration does tend to be much cheaper than other forms of intellectual property protection such as patent protection.
Rechtsanwalt, Partner, Head of Employment & Reward, Germany