Designs: Intellectual Property
- Square off a corner of your market for your business
- Preserve exclusivity of visual appeal in products and electronic assets
- Protect distinctive appearance of original designs and products
Overall, design protection is an underused area of intellectual property rights protection.
Products don’t need to be up for design awards to protect intellectual property rights with UK Design Right or a registered design.
Designs law is there for savvy businesses to take advantage to protect aesthetic features of the shape and appearance of products.
For business depending on the visual appearance of products and visual electronic assets to set themselves apart, designs rights should be near the centrepiece of their intellectual property protection regime.
Businesses which need to protect machinery and other products where function dictates design, design protection is also available.
What We Do
Our services to protect intellectual property rights in designs include:
- identifying and enforcing relevant rights to protect designs
- assessing and advising on suitability of design protection in online digital media
- preparing design applications for applications for registration
- using design rights in combination with other rights to maximise IP protection
- preparing legal documentation for:
- licensing of designs
- sale of designs rights
UK Law of Designs
The law of designs:
- provides a layer of protection against predatory copying by competitors, when they make their products look like yours
- protects hard-earned industry knowledge, research, development and the product of market research
- makes it harder for competitors to capitalise on investment in product development
- creates a barrier to competitors, increasing the prospect of higher returns on investment
Types of Designs
Design patents are not recognised in the UK.
In the UK, designs law is own freestanding area of protection of designs to protect IP rights, separate to patent law.
There are two separate legal rights available to protect designs.
Each has different prerequisites to qualify for protection.
What is Design Right?
Like copyright, the UK design right applies automatically when a qualifying design is created. There’s no need to copyright a design: protection takes place by operation of law.
The law of UK unregistered designs - the Design Right - protects:
- shape designs: three-dimensional features of products which are not commonplace
- subcomponent parts of a product which come together form a larger product. Multiple unregistered designs which form part of a larger design may be protectable.
Depending on the shape and features of the product, the design rights can be extensive
- two-dimensional features of unregistered designs which are functional
They’re protected however they’re produced, whether as a description, hand-drawn, machined, or in electronic form with computer-aided design software.
Protection against design right infringement lasts for up to 15 years from the creation of the design.
Design Right Infringement
Infringement of design rights is one of the types of intellectual property infringement.
Owners of design may take action against third parties who without permission:
- make articles & products to the design;
- copy or make their own design documents to manufacture products to design
- store, buy or sell products made to the design, or import them into the United Kingdom for sale.
Registered Designs gives IP rights protection by a formal application process with the Intellectual Property Office.
Like patent rights, registered designs grant absolute protection of the design: it doesn’t matter whether infringers knew about the design or not, or deliberately copied it or not. It’s enough that they use an infringing design, no matter how they came about using it. That’s similar to the rights granted to owners of patents.
That means that evidential burden to prove design infringement on rights owners is lighter, with legal remedies within closer reach, with easier access to injunctions and financial remedies.
Types of Products
Protection extends to all types of qualifying industrially manufactured products and those that solely exist in the electronic environment.
Products require some distinctive and new visual characteristic, whether it was designed for domestic or industrial use.
Registration of a design can protect:
- 2-D designs
- 3-D designs
- surface decoration (also called ornamentation) of graphic design work and symbols, such as patterns, character images, logos, user interfaces and icons
Features which may seem trivial to those outside the industry such as the lines, contours, colours, textures applied to a product can be protected when they have individual character.
The designs with “individual character” in the relevant sense produce a different overall impression of the design over all other designs. It is the overall impression which the sign gives to an informed user which defines the extent of the exclusive rights to the owner. The artistic value or design merit is disregarded. It is not about the design being attractive or visually appealing.
Registration of designs gives IP rights owners the exclusive right to:
- use the design as registered
- use any other design which does not produce a different overall impression on the informed user
- making or storing articles for sale
- selling, importing, exporting or using a product in which the design is incorporated
Notice to potential Infringers
Registered designs allow businesses identify their designs by printing registration numbers on products and in meta-data of electronic files.
It works as marker against intellectual property theft, unlicensed use and infringement. It puts copyists on notice that the design is protected.
Unlike patent law, designers are not required to apply for design protection before products are marketed to preserve their rights to register, provided that another business does not also market the same or similar design in the same time period.
Common sense says that registration should be applied before products are market or made available for sale. If that is not possible, an application should be made as soon as possible afterwards it has been put in the public domain and confidentiality is lost.
Businesses serious about protecting intellectual property maintain confidentiality of the design prior to applying for design protection.
Period of Protection
Registered protection lasts for up to 25 years, with renewal fees payable to continue registration every 5 years, if it is a commercially viable product.
Examples of Designs
Examples of the sort of designs which designs law protect include:
- product packaging, such as shapes of containers for products
- graphic representations, such as icons
- graphical user interface layouts used as part of software applications, whether they appear on mobile devices or anywhere else
- graphic symbols and labelling such as those you’ve seen in marketing campaigns
- sales and advertising equipment
- IT equipment such as the shapes of keyboards, servers, computers and routers.
Design Rights: Advantages
Designs law protects products and design documents (which record the design) equally in the online environment as they do in the offline environment.
That’s because the thing protected is a design: the concept which is applied to an object. It is not the object or product itself, but that is the end result of the application of the design that is protected.
Barrier to Market Entry
Coverage of design rights present another obstacle for competitors to overcome when they’re in the business of overborrowing or stealing intellectual property rights to sustain their own business.
They’re useful when you have them, when competitors look for an easy way to generate their own sales off the back of successful third party designs.
If registered protection is not obtained, the opportunity to do something about it is less likely to be available.
When businesses apply for design protection, they continue to have the benefit of unregistered design protection.
Integrated IP strategies should, where available, create barriers to entry to markets for competitors.
The protection granted adds a further layer of intellectual property protection which:
- would not otherwise exist
- serves an additional means of protection which is not available with other forms of intellectual property protection
- enables intellectual property licensing
Saleable products containing these features may well justify intellectual property protection with envisaged product success.
Registered Design Infringement
In order for a design to infringe a registered design, the relevant legal tests include:
- the field or market sector in which the design fits
- what a person familiar with previous designs in the relevant field or sector knows: an informed user
- identify the freedom which the designer has in respect of product features of the design. The freedom to create designs for different products are affected by intrinsic restrictions and limitations.
For example, the limitations to designs which apply to design a computer monitor will different from those for computer keyboards, as they would to a design for a headlight for a car.
With that a side-by-side comparison is made to able to be made between the registered design and the design said to be an infringement.
Legal Remedies: Design Infringement
The legal remedies for infringement include:
- damages or an account of profits arising from the infringement by competitors
- additional damages where the infringement has been flagrant: the infringer has acted with disregard for the design owner’s rights
- the ability to prevent further infringement with an injunction
- court orders requiring the infringer to destroy or deliver infringing products to the owner
We’ve assisted clients guard against importation of mass-market goods into the UK and Europe, and supported them in highly contentious disputes.
We’ve advised on:
- toys, handmade goods and handicrafts
- design infringement of clothing in the fashion industry
- technical and industrial products imported to the UK from around the globe
- user interfaces designs
- trademark rights which coexist with design rights to expand areas of legal protection
- when infringement is the better option than copyright infringement
Such is the nature of design rights, protection works best when it forms part of an overall IP strategy.
Registered Design Solicitors
UK designs more easily keep competitors away from unique visual features which set your products apart from others.
Using registered design numbers serves to tell third parties of the existence of design right protection, and that copying it might not be as problem-free as they first think.
We can help your business manage and make the most of intellectual property protection to take steps to deal with intellectual property theft.
To capture the value of intellectual property rights to your business, contact us.