Registration requirements: product design and design protection
Certain unregistered design rights will come into effect the moment an eligible design has been produced or recorded in a design document; however, many companies will also seek to obtain registered design protection for an eligible object or product design, as a registered right confers many legal advantages on its owner. For designs, including patterns, to be protected in a national or overseas market, certain registration requirements will need to be met.
This is a guide to obtaining national design rights, click here for more on obtaining rights overseas.
Registration requirements: obtaining national rights
Designers or inventors seeking a national (e.g. UK) application for design protection will need to comply with a number of registration conditions, namely:
- The design must be ‘new’. It will fail this test if an identical design, drawing, pattern or model has previously been made available to the public.
- It must possess ‘individual character’; in other words, it must be possible for a so-called ‘informed user’ to distinguish between the new design and a similar product. If the so-called informed user would consider that the product design creates the same overall impression as a design that has been previously made available to the public, it may not possess sufficient ‘individual character’ to be eligible for protection.
- The design does not have to be aesthetically pleasing in order for it to be registered, but an application will be rejected if it is based solely on how the item functions.
- There are a number of designs that aren’t eligible for registration; for example, certain coats of arms, national flags and insignia. Anything deemed contrary to public policy will also be rejected.
Speak to an attorney for guidance on whether your design meets these registration requirements.
Registration requirements: how to obtain design protection
For a national (e.g. UK) registration, the design must be registered with the national patent and trademark office, within a set period from it first being marketed (generally 12 months). It is generally possible to claim a priority date for a design application made in another country, so long as that country is a signatory to the Registered Designs Convention. Click here for more on extending your national right into overseas markets.
Registration requirements: scope and length of design protection
Depending on the jurisdiction, the scope of protection offered is potentially very broad and can include a product’s shape, contours, colours, texture/materials and, even, ornamentation, which means that anything from mass-produced furniture to a new mobile phone handset may be eligible for protection. In the case of a product design, an application can be made to protect the whole product and/or its component parts; for example, you could apply to protect the patterns used on a dress as well as the dress’s overall design, so long as the registration requirements are met.
Registration grants an exclusive right to make, sell, distribute or license the design within the territory of protection (e.g. the UK) for the length of registration, and gives you the legal means to act against any party that copies that design without your permission. If your product design, shape or appearance (for example, proprietary patterns) becomes synonymous with your brand, then the design right that protects it will become a valuable asset.
A registered design initially lasts for five years; however, it can be renewed every five years, up to a total of 25 years, on payment of renewal fees. Generally, the application and renewal process is straightforward and offers good value for money.