Design Rights: Protecting Creativity and Innovation
Adam Benedict was recently instructed by a large luxury bespoke lighting company in respect of advising on and registering designs with the Intellectual Property Office. Adam Benedict successfully secured registrations for UK Designs for specific bespoke lighting designs as required by our client.
What Are Design Rights?
The design of a product plays a crucial role in its market success, from the way it looks and feels to the impression it leaves on consumers. Design rights are a form of intellectual property (IP) protection that can safeguard the appearance of a product. Whether you're an entrepreneur, designer, or business owner, understanding UK design rights is essential for protecting your unique creations and ensuring that competitors cannot exploit your ideas without permission. Adam Benedict can assist with this complex process.
There are two types of design rights in the UK:
Registered Design Rights
Unregistered Design Rights
Registered Design Rights
The design of something can include:
Physical shape
Configuration
Decoration or colour
Pattern
You can protect two-dimensional designs and surface patterns as well as three-dimensional products.
Registered rights require formal application and registration with the Intellectual Property Office. Once a design is registered, the owner of the design can take action against someone who is ‘making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied or stocking such a product for those purposes.’ . The owner will not need to provide ownership or creation as the registration will evidence this. In cases of infringement, the court can issue an injunction to stop the infringing activity, award damages, or even order the destruction of infringing products.
Registered designs last for up to 25 years, subject to renewal every five years. Once you have registered your design you can also license and sell this design.
Registration
Registration is made with the UK Intellectual Property Office (UKIPO) and can be made online or by post.
There are specific rules as to what can and what cannot be registered. The first rule is that the design must be new and original. The design must not have been made public before the application, although there is a 12 month grace period.
The design must not include any offensive material, designs of national flags, official emblems or hallmarks, without permission, or include the functionality of a design.
Further, before any application is made you would need to review design registers to check if the design has already been registered. The UK IPO has a Designview search tool which can be used to search for designs registered in the UK, EU and internationally.
You can file up to fifty designs in one application. The fee is £50 for one design and £150 for up to fifty designs. When submitting the application detailed illustrations of the design must be included. If submitting online, you can include 12 illustrations, if you need to include more than 12, applications must be made by post.
Providing the correct illustrations are essential to registering your design and each illustration must meet the criteria designated by the UKIPO. This includes the following:
More than one view of the design as separate illustrations
Show the design as it appears to the eye, using photos, line drawings, computer-aided design or rendered CAD
Be the same type of image i.e. all line drawings or all photos)
Show the design against a plain background
Be clear
Contain no text, measurements etc
Only include objects necessary to demonstrate the design
Include the complete pattern and how it repeats if registering a surface pattern
Further, if the illustrations include things you do not want to register you must show what parts of the illustration you want to register (limitation) and the parts you do not want to register (disclaimer).
After Application
The IPO will examine the application and if there are no issues your design will be registered, which is usually within 3 weeks.
If there are any issues with your application the IPO will contact you and there will be a period of around 2 months to resolve them.
After Registration
Once your design is registered it will be published in the journal of registered designs.
Unregistered Design Rights
Unregistered design rights offer protection automatically, without the need for registration, for the shape and configuration of a design. They come into existence as soon as the design is created, provided it’s original and not commonplace in the field at the time of its creation.
It is only available for three dimensional designs and not mere surface decoration or pattern. Additionally, after five years, anyone can request a license to use the design.
Protection lasts for 10 years after the first sale or 15 years from the date the design was created, whichever is earlier.
The biggest downside of the unregistered design rights is that it can be difficult to prove ownership or infringement, as there’s no official records of the design.
Conclusion
In the UK, design rights provide a valuable form of protection for the appearance of products, allowing creators and businesses to safeguard their innovation. While unregistered design rights offer some level of protection automatically, registered design rights offer far more robust and enforceable protection.
For anyone developing new products or working in industries where visual appeal is key, understanding and utilising UK design rights is essential to maintaining a competitive edge and preventing others from capitalising on your hard work.
If you’re considering registering a design or need advice on protecting your intellectual property, Adam Benedict can assist. As experts in design rights and other IP issues, we are able to provide tailored legal advice and support to ensure your rights are fully protected, helping you navigate the complexities of intellectual property law in the UK and beyond.
