Our registered design rights FAQs are designed to give you an introduction to this form of IP, and answers to common questions our IP lawyers often deal with. Design rights can be a useful form of intellectual property protection, particularly for the creative industries like fashion, design and manufacturing, where appearance may be central to the appeal of a key product or service. If, after reading this FAQ, you believe you require legal advice, try our design right services, including registration, strategy and enforcement.
Jump to individual registered design rights FAQs:
- What are registered design rights? What does a registered design mean?
- What can be protected by design rights? What do they cover or apply to?
- Does design apply to surface decoration?
- What is the difference between registered and unregistered design rights?
- What are examples of unregistered design rights?
- Can you copyright a design? How does it overlap with other forms of IP protection and what’s the difference?
- Should you choose a design right or a patent? What’s the difference?
- How can a design right be registered? What is the process for registration?
- What does a registered design right cost?
- How long does a design right last?
- Is there a grace period for registered design rights?
- What rights and level of protection does a design right give?
- How do you prove design right?
- How can a design right be enforced?
- How are design rights protected in the EU?
- What is a design right reciprocal protection order?
- What is a license of right?
- Who is a qualifying person for unregistered design right in the UK?
- Are there exclusions to design rights?
What are registered design rights? What does a registered design mean?
Registered design rights are exclusive rights in the visual appearance of the whole or part of a design (such as texture, colour or shape) when applied to a functional object. It is a type of legal protection that protects the appearance of a functional product from being copied by anyone else other than the owner.
Whereas unregistered design rights subsist automatically, to obtain a registered design, an application has to be made to the Designs Registry of the Intellectual Property Office (IPO) and there is a process that must be followed before the design right is registered. A registered design is a design right that has been registered with the IPO. The person who owns the registered design can prevent another party from copying a product that looks identical or similar to the one with a registered design without the need to prove that copying has occurred.
What can be protected by design rights? What do they cover or apply to?
Design rights protect the appearance of a functional product such as the shape, texture, colour, materials, lines and decoration provided that the design is different from any existing design – ie, it is original and provided that it is not commonplace in its field.
Examples of what can be protected by design rights are for example graphic designs, computer icons, patterns. Design rights protect the appearance of a product such as the tread pattern on a tyre.
Does design apply to surface decoration?
No, it is not possible to protect surface decoration.
What is the difference between registered and unregistered design rights?
Unregistered design rights arise automatically provided that a design meets certain criteria. This automatic intellectual property protection applies to original, non-commonplace designs and protects the design from being copied. In the UK this right is only applicable to three-dimensional designs and protects the shape and configuration of products both internally and externally.
Registered design rights protect the complete appearance of a product including its physical shape, colours, materials, texture and lines. They involve a higher level of protection for designers who can register the design with the UK Designs Registry provided that the design is new, not offensive, without use of protected flags and emblems, and that isn’t an invention. A two-dimensional design must be registered to be protected.
To enforce unregistered design rights requires evidence of actual copying, whereas the monopoly that registered design rights has means no evidence of copying is required to constitute infringement. By comparison, unregistered design rights also have a shorter life span of up to 15 years in the UK and only 3 years in the EU, whereas the duration of registered design rights gives the owner protection of up to 25 years in the UK and EU, subject to the protecting being renewed every five years.
What are examples of unregistered design rights?
Good examples of unregistered design rights are designs in the textile and fashion industries. Whilst high street chains such as Topshop develop a large number of designs, many of which are seasonal and with a short shelf life, registering them would be too costly and inefficient.
Can you copyright a design? How does it overlap with other forms of IP protection and what’s the difference?
A design may be protected under copyright and unregistered design right and may also be able to be registered as a registered design. Whilst copyright will mainly protect any artistic or literary work included within a product or documents detailing the design of a product, design right focuses more on the shape, configuration and appearance of it. Like copyright, unregistered design right subsists automatically on creation of a design – there is no process to follow to obtain protection.
Like copyright, patents and trade marks, design rights can also be bought, sold or licensed and are used to prevent unauthorised copying of an original design.
Design rights also overlap with trade marks and patents to the extent that these other IP rights may be relevant to the same article or design. Logos are often protected as registered trade marks but not many people are aware that they can also be registered as a design right to offer additional protection. Whereas trade mark registration can be renewed indefinitely, registered design protection is limited to 25 years. Also it is not possible to register a design that has been publicly available more than 12 months before applying for registration, whereas there is no such restriction on filing a trade mark application.
Patents protect the way that something works rather than its appearance. So although there may be some overlap where a part of the appearance of an object affects how it works, the protection obtained by a patent is much broader than what is offered by a registered design right.
To give an example of overlapping forms of IP protection, a mobile app may involve copyright to the extent of the software code, design rights to the extent of the appearance and feel of the screen display or graphic icons and also possibly patent rights depending on whether it involves a new invention.
Should you choose a design right or a patent? What’s the difference?
A patent must meet strict requirements of novelty and inventive step, and protects the way something works rather than its appearance. As such, a patent is not suitable where it is the shape or the appearance of an object that needs protecting.
Patents are much harder and more expensive to obtain compared to the quick and cost-effective process of registering design rights. This makes registered design rights a good option for companies seeking to protect digital and new media products such as apps and computer games. Like patents, a registered design right gives the owner a monopoly in their design and the right to take legal action to prevent others from exploiting a product identical or similar to that registered without the owner’s consent. There is no need to prove copying and, like patents, a registered design owner can prevent another person from producing a product that looks identical or similar to the owner’s, even if they claim to have never even seen it before.
How can a design right be registered? What is the process for registration?
Registering a design is a straightforward and cost-effective process. An application must be made to the Designs Registry of the Intellectual Property Office (IPO) with the prescribed fee. It is also possible to apply online to the IPO.
In the UK, the IPO will examine the application within two weeks. The examination process will involve examining the design for novelty and individual character and any designs which are dictated by technical function will be refused. If there are no objections the design will be registered immediately. If an objection is raised, the applicant has two months to respond. An applicant can request a hearing if he or she (a) believes that the application has been dealt with unfairly or (b) disagrees with the decision about the design. Once approved, the design will be added to the list of registered designs and made public unless registration is deferred, which can be done for up to 12 months.
In the EU, the design application will be checked to ensure that the formalities have been observed and the correct fee has been paid but there is no examination as to whether the design meets the other criteria for registration (that is, new and having individual character). The timeframe is shorter for EU registered designs which can be registered in as little as two days from the date of the application.
What does a registered design right cost?
The prices for registering design rights are slightly between the UK and the EU:
- UK – £50 per design (£70 for up to 10 designs)
- EU – €230 (€115 for up to 10 designs)
This excludes lawyers’ fees or other supplementary expenses like the cost of preparing the drawings.
How long does a design right last?
Duration depends on whether the right is registered or not:
- Registered design rights – 25 years provided that a renewal fee is paid to the IPO every five years.
- Unregistered design rights – either (i) 10 years after the first marketing of objects using the design or (ii) if no marketing is done, 15 years after the creation of the design.
Is there a grace period for registered design rights?
An application to register a design should be filed before the design has been made available to the public anywhere in the world. However, there is a 12-month grace period before the application is filed and any disclosure by the designer during this 12-month period is not considered as making the design available to the public. Accordingly, an application may still be filed if the design has been disclosed and the 12-month grace period has not expired. However, the grace period only applies to disclosures made by the designer.
What rights and level of protection does a design right give?
Unregistered design right in the UK protects the shape and configuration both internally and externally of three-dimensional designs of products. The right arises automatically and allows the owner to prevent anyone else using their design without permission but infringement and copying must be proven. Unregistered design right in the UK lasts for up to 15 years in the UK.
A registered design in the UK protects the appearance and physical shape of a two or three-dimensional product such as its colours, materials, texture and shape. Registered design rights must be applied for and a formal process followed but once registered gives the owner a monopoly in the design without proving copying. The owner can effectively prevent another person from producing a product that looks identical or similar even if they have never seen the owner’s product before. In the UK a registered design is protected for up to 25 years provided that the protection being renewed every five years.
How do you prove design right?
Unregistered design right arises automatically, provided that:
- the design is original – one that’s all your own work
- the design is non-commonplace – for example, it’s not widely acknowledged within groups of comparable products
Registered design must meet the following criteria:
- the design must be new
- the design cannot be offensive (it cannot feature graphic imagery or words)
- the design cannot utilise protected flags and emblems (such as the Royal Crown or the Olympic rings)
- the design cannot be an invention (if it was an invention a patent would be needed).
How can a design right be enforced?
To enforce either registered and unregistered design rights, infringement proceedings can be brought by the claimant before the courts to seek:
- damages or an account of profits
- an injunction to prevent further infringement, and
- an order for delivery up or destruction of the infringing articles.
There are caps on the level of damages and costs that can be obtained.
The main difference between enforcement of unregistered design right and registered design right is that for registered design there is no requirement to prove that infringement was deliberate. Owners of unregistered design rights must be able to prove that (a) they created the design in the first place and (b) deliberate copying has occurred.
How are design rights protected in the EU?
For design protection in the EU, a design must be new and have an individual character. There are two kinds of EU designs:
- unregistered community design (UCD); and
- registered community design (RCD)
A UCD gives its owner the right to prevent unauthorised copying and unauthorised dealing of the design throughout the European Union. Unauthorised dealing means for example putting on the market, importing, exporting or possessing a product incorporating the protected design without the consent of the owner. There is no formal registration procedure to obtain a UCD and it comes into existence automatically when the design is first made available to the public within the EU. A UCD lasts for three years from when the design is first made available to the public. The owner of the UCD is the designer, or his or her employer if the design is developed in the course of employment.
An RCD gives the owner protection against similar designs even when the infringing design has been developed in good faith and without copying the protected design. An RCD is initially valid for five years and can be renewed up to a maximum 25 years. To get RCD protection, the design needs to be protected through application to the European Union Intellectual Property Office (EUIPO).
The scope of protection for both UCD and RCD is the same and they have the same requirements for protection (novelty and individual character). What differs is the rights granted. RCD owners have exclusive rights to use the design and prevent others from doing so whereas UCD owners can only prevent others from using the design commercially through copying. This means that there is no infringement of a UCD if another designer creates a design independently who is not aware of the existence of the UCD.
What is a design right reciprocal protection order?
Reciprocal protection under the Design Right (Reciprocal Protection) Order 1989 (No.2) 1989 (SI 1989/1294) is offered to the following countries:
- British Indian Ocean Territory
- British Virgin Islands
- Cayman Islands
- Channel Islands
- Falklands Islands
- Hong Kong
- Isle of Man
- New Zealand
- Pitcairn, Henderson, Ducie and Oeno Islands
- St Helena and Dependencies
- South Georgia and the South Sandwich Islands
- Turks and Caicos Islands.
What is a license of right?
During the last five years of the term of an unregistered design right, the design is covered by a ‘Licence of Right’ meaning that if any party asks the owner of the unregistered design right within this five year period, they are entitled to have a licence of the design right. If the owner and the potential licensor are unable to agree the terms of a Licence Agreement they must contact the Intellectual Property Office (IPO) to settle the matter provided that nothing can be referred to the IPO earlier than one year before the earliest date that the licence of right becomes available.
Who is a qualifying person for unregistered design right in the UK?
The individual or company that engaged a designer to make the design will be the owner of unregistered design right in the UK.
Are there exclusions to design rights?
There are certain things that cannot do to be protected by design rights:
- The design of a product must not be a method or principle of construction – design rights only protect a characteristic of a product but not how it was made.
- The design must not contain aspects of shape or configuration of an article which (a) enables the article to fit with another article so that either article can perform its intended function, or (b) is dependent upon the appearance of another article of which it is intended by the designer to form an integral part.
- The design must not be a design for surface decoration – for example the colour of a product will not be protected by a design right