Registering a design can give significant protection for an innovative product.  Historically, designs have sat uneasily alongside copyright and patents.  Since 1989, we have had unregistered design right in the United Kingdom as well as registered designs, but registration gives greater protection. 

The rules and procedures for design registration have hitherto differed as between the UK and other EU countries.  As from 9 December 2001, the United Kingdom has had a new set of rules for registering designs for products.  Implementing the EC Designs Directive (98/71/EC), the Registered Designs Regulations 2001 make significant changes to the extent and scope of design registration, the procedures involved in registration and the enforcement of registered designs.  The effect of the Directive is to harmonise European design law for the first time.

One of the main changes is in the kind of designs that are registrable.  Under the old law, they were defined as features of shape, configuration, pattern or ornament applied to a product by an industrial process.  A design was only registrable if in the finished article the design had ‘eye-appeal', and if aesthetic considerations were relevant to the product.  Under the new law, a design is defined as the appearance of the whole or part of a product resulting from the features of lines, contour, colours, shape, texture or materials of the product or its ornamentation.  This includes a potentially wider set of features.
 
The new definition of a design applies to the whole or part of a product (including its interior), although special rules apply to component parts of complex products.  Whereas the old law was limited to designs applied by an industrial process, the new rules apply to designs for any industrial or handicraft item, including their packaging, get up, graphic symbols, typefaces, or the parts of a complex product.  Computer programs are specifically excluded, although it is clear that icons displayed on a computer screen are capable of registration.  Although the new definition of a design refers to the appearance of the whole or part of the product, aesthetic considerations as such are no longer relevant. 

As under the old law there are certain exclusions for registrability.  In particular, features of the appearance of a product which are solely dictated by the product's technical function are still incapable of registration, as are those necessary for mechanical connection of a product in order to perform a technical function.  But there is no longer a bar on registering features of shape or configuration which are dependent upon the appearance of another article.  At the same time, it is no longer possible to register a series of associated designs.

As before, to obtain registration a design must be new, but there is now a different definition  of what this means.  In principle, it means that no identical design, or design features which differ only in immaterial details, has been available to the public.  In addition, the design must have individual character, that is, the overall impression produced on an informed user must differ from that produced by any design made available to the public before the date of the application.

In determining whether a design is new, it has always been possible to ignore certain disclosures which have been made.  As under the old law, disclosures in confidence will not prevent a design being registered.  In addition, a disclosure by the designer during the twelve months prior to an application for registration will be disregarded, so that a designer now has a window of opportunity to market test a design.  Although the new rules apply to prior disclosures anywhere in the world (and not just the United Kingdom, as under the old law), a disclosure that would otherwise prevent registration of a design may be ignored if it could not reasonably have been known to business persons in the EEA.

The effect of registration is to give exclusive rights to the proprietor to make, market, export, use and stock products with an identical design, or a design that does not produce on the informed user a different overall impression.  Because the registration of a design is not limited to a specific product (although an indication of the kind of products to which the design is intended to be applied is required for registration), a proprietor's rights will extend further than before.

There are various new defences to an infringement action, including exceptions for non-commercial research.  A significant exception relates to parts: under the old legislation, designs for spare parts were not registrable.  As indicated above, they are registrable under the new law, but it is not an infringement to use a component part to repair a complex product.  Other uses, however, may amount to an infringement.

Previously the Registrar had a wide discretion to permit registration, and the courts could declare a design registration to be invalid on a number of grounds.  Under the new law, there is an exhaustive list of the grounds for registration, refusal of registration and findings of invalidity.

A number of the remaining provisions of the old legislation have been left intact.  A design can be registered for successive periods of five years up to a total of 25 years.  The rules for ownership of designs are also unchanged:  the first owner will be the designer, except where the design is produced by an employee in the course of his or her employment (when it will belong to the employer) or pursuant to a commission (in which case the commissioner will be the first owner).  An action will lie to compensate the recipient of unjustified threats of infringement proceedings.

Unregistered design right gives lesser protection for a period of up to 15 years.  It does not require registration, but is subject to compulsory licensing in the last five years of protection. Protection is available for any aspect of the shape or configuration of an article (whether internal or external) with exceptions relating to those aspects of the design intended to match or fit with other articles, or surface decoration of the article.  Unregistered design right does not give an absolute monopoly, only protection against unauthorised copying.

© Davenport Lyons 2003.  All rights reserved

This document reflects the law and practice as at May 2003.  It is general in nature, and does not  purport in any way to be comprehensive  or a substitute for specialist legal advice in individual circumstances.