Design Rights

Your designs may be protected by both unregistered and registered UK and Community design rights. A Community design right gives you protection for the whole Community, without the need for separate formalities in each EC country.

Unregistered design rights are free and arise automatically, whereas registered design rights cost money to obtain. You should always keep evidence of the creation and date of any design, as you will need this if you later decide to enforce or defend your design right.

If designs are commercially important to your business, the downside of only owning unregistered design rights is that you can only stop third parties from copying your designs. Therefore, if a third party independently creates the same design as you, you can not stop them from commercialising it. Further, the period of protection of an unregistered design right is much shorter than for a registered design right.

A registrable UK or Community design is “some aspect of the appearance of the whole or part of a product resulting from features of, in particular, lines, contours, colours, shape, texture or materials of the product or its ornamentation” which is both new and has individual character.

A registrable design can therefore be anything ranging from the pattern of a material to a company logo to the appearance of a toy or card design or any 3 dimensional shape. However, a registrable design cannot be a computer program or in relation to features which are either solely dictated by technical function, are necessary to “fit” with something else (although certain exceptions apply for modular parts such as Lego) or are hidden in normal use.

A registered design should be filed as soon as possible after its creation, but it is sufficient for a design to be filed within 12 months from the date it was first published.

The basic filing cost of a UK design right is around £60.00 and the basic costs of filing a Community design right is around £600. A design can be registered for up to 25 years from the date of application and gives owners the right to stop other people from selling, marketing and using a design that does not create “a different overall impression” to their registered design.

Once you have registered design rights, you have the ability to leverage commercial value from them. You can exploit your registered design rights by licensing and, if desired, selling to third parties. Depending on the size of your business and importance of the designs to it, we may recommend policing your rights by setting up, a design right watching service to monitor third party activities.

You should also be prepared to litigate in the event that a third party is infringing any of your design rights and refuses to cease infringing and/or settle. If you have a strong case and you win, you may be awarded damages by the Court to compensate for your loss. On the other hand, if your case settles before trial, your litigation arguments can give you scope to leverage favourable licence fees or royalties by way of settlement.

We can assist you to assess the commercial need for design registration and, if necessary, obtain registered design right protection. If you are sued for design right infringement or suspect that a third party infringes one your designs (whether registered or unregistered) we can advise on your chances of success, devise a litigation strategy tailored to your business model and where necessary litigate in the Courts.