Design protection is most suitable to protect your investment in the outward appearance or packaging of design and fashion items such as clothing, footwear, accessories, as well as logos and graphic symbols applied to goods such as textiles and wallpaper.
Design right can also serve as a useful adjunct to trade mark rights. For example, if your brand is a non-traditional trade mark consisting of the shape of goods or packaging, or colours, or a slogan, you may encounter difficulty in obtaining trade mark registration in the UK or abroad unless you can show that you have built up a secondary meaning in the mark through your use. In this type of case, you may be able to rely upon registered or unregistered design protection to help prevent unauthorised use or copying in the interim period during which you are building up the use and recognition of your trade mark.
UK Registered Design
A UK registered design can last for a maximum of 25 years (subject to 5-yearly renewals). It protects the whole or part of the outward appearance of a product or packaging, including surface decoration. It is an exclusive right which allows its owner to stop unauthorised third party use of the registered design without any need to prove copying.
The design must be new and have individual character over prior designs, however, a designer has a grace period of 12 months from first marketing in the UK to file a UK registered design.
Registered Community Design
An Registered Community Design is comparable to a UK Registered Design but covers the EU. There is a grace period of 12 months from first marketing in the EU.
From 1 January 2021 a Registered Community Design no longer covers the UK but the UK portion of an existing Registered Community Design has automatically been ‘cloned’ into a comparable UK Registered Design to avoid loss of rights.
Until 1 September 2021 it is also possible to file a UK Registered Design claiming priority (i.e., the same filing date) from a Registered Community Design which was pending on 31 December 2020.
International Registered Design/Hague Agreement
Both the UK and EU (and many important markets such as Canada, USA, Japan, Russian Federation) are members of the Hague Agreement which enables a designer to obtain an International Registered Design covering up to 100 different designs in the same Locarno class in a single application filed with the World Intellectual Property Office (WIPO). The Hague Agreement system allows for central renewal and maintenance of this bundle of international rights.
Unregistered Design Right
Until 31 December 2020, UK designers could rely upon EU Unregistered Design Right (EUUDR) to protect new designs of goods or packaging from unauthorised copying in the EU (including the UK) for 3 years from first marketing. Any EUUDR in existence before Brexit will continue to have effect until its natural expiry.
From 1 January 2021, new designs first marketed in the UK can no longer rely upon EUUDR. However, they may rely upon a new UK equivalent right, UK Supplementary Unregistered Design Right (SUD).
SUD does not extend to the EU, however, possession of separate Registered Community Designs will likely entitle right holders to stop unauthorised third party use and to oppose further marketing in the EU.
Additionally, UK unregistered design right (UDR) protects features of shape and configuration (but not pattern or surface decoration) for up to 15 years from when a product is made to the design or the design is noted in a design document (although third parties can claim a licence of right during the last 5 years).
It should be noted that the impact of Brexit upon unregistered design protection is complex and, in many cases, it will be prudent to obtain registered design protection in UK and EU before first marketing in order to avoid possible gaps in protection.
The Advantages of Registered Design
- Registration is inexpensive and very quick with minimal examination.
- Unlike trade marks, a registered design cannot be revoked for non-use.
- It is a valuable adjunct to trade mark rights - relatively minimal stylisation is required to obtain registration of 2 dimensional visual elements.
- Protection lasts for up to 25 years – compared with 3 to 15 years for EUUDR, SUD and UDR.
- A design registration can be used to stop another party who has come up with the same design independently – it is not necessary to show copying.
- Filing an EU Design Registration prior to first marketing/disclosure in the UK should avoid invalidity claims for lack of novelty.
- Filing a UK Design Registration prior to first marketing/disclosure in the EU should avoid invalidity claims for lack of novelty.
If you have any question or need help with a design matter contact us here.