- 11 mins read
Great product design deserves protection. Protecting rights in new designs can be a crucial ingredient to business success.
This guide aims to help you to think about the legal aspects you need to consider when deciding what you want your products to look like and how best you can protect them from imitation.
Choosing a new design
There are a variety of different legal and non-legal issues to consider when deciding on a new appearance/design for a product. Often the legal aspects get overlooked.
Before adopting a new appearance/design for a product, at the very least it is essential that you think about the following two legal issues:
- If I use this new appearance/design will I infringe someone else’s earlier legal rights (e.g. their registered design)?
- Will I be able to get a registered design for my new design, thus making it easier for me to stop others from using my design or something similar?
Both issues can be addressed through conducting pre-use clearance searches, investigations and taking preliminary legal advice.
Why is it important to consider the legal issues?
When choosing and adopting a new design for a product, many businesses fail to appreciate that they ought to carry out pre-use clearance searches and investigations.
Pre-use clearance searches will help to determine whether the use of your proposed new design would result in you infringing someone else''s legal rights in an identical or similar registered design.
If you do not carry out searches and investigations you run the risk of using a design that someone else has an earlier legal right to use and/or to prevent you from using your design.
Holders of registered and unregistered designs can take legal proceedings against anyone who uses an identical or very similar design.
Such proceedings can be extremely serious for a client’s business and expensive to defend and/or resolve. If legal proceedings are successful, a defendant is normally prevented from continuing to use their design and may have to pay large sums in damages to compensate the earlier design owner. A defendant would normally also have to bear the earlier design owner''s legal costs, as well as its own legal costs.
On top of any damages and legal costs that you might end up having to pay, there is nothing worse than having to go to the cost and effort of a re-design, especially when it is a mere month or two after your new product design was first launched to the public and to the trade. In a world where reputation is increasingly driven by social media, having to conduct a re-design because of legal pressure from a third party earlier rights owner could easily result in a major loss of customer goodwill, damage to your brand reputation and provide your competitors with an advantage, which could have been avoided.
Businesses can devote a great deal of time and money to their design, production and marketing plans, before they realise that another business has an identical or similar product design that can prevent them using their proposed design. Conducting clearance searches and investigations at the outset can help to avoid this possibility. Usually this will involve carrying out (as a minimum) a UK and Community registered design search, to see whether your proposed design (or a very similar design) is already registered.
In addition, internal investigations will ascertain what designs ''inspired'' your own design team to produce the proposed new product design (i.e. did they copy someone else’s design?). It is possible that a third party may have earlier ''unregistered'' rights in a design, which would not be revealed by a search of the UK and Community registered designs register, but which could prevent you from using your new design.
Pre-use clearance searches will help to assess the chances of your design achieving registration as a registered design.
Pre-filing searches and investigations can help avoid a situation where a business has incurred the cost of filing a registered design application, which must subsequently be abandoned due to another business'' earlier rights. For example, they should hopefully reveal whether someone else has an earlier registered design, which they could rely on to prevent the registration of your design.
Owners of earlier registered and unregistered designs can rely on their rights in order to invalidate design registrations that are identical or very similar to their designs. If invalidity proceedings are successful, your design registration would be invalidated and you would normally have to bear the earlier design owner''s legal costs, as well as your own legal costs.
What is a registered design?
Registered designs are designs that are recorded on a public register, which prevent another trader from being able to use the same design. They can also stop another trader from using a very similar design. They are negative, monopoly rights.
In order to obtain a registered design you have to file an application at a national registry (e.g. the United Kingdom Intellectual Property Office), or at OHIM if you wish to obtain a Community registered design, or via WIPO if you want an international design. You also have to pay official filing and publication fees.
Once registered, provided that you pay your renewal fees every 5 years, a UK or Community registered design will normally last for 25 years from the date of filing the application.
What can you register as a registered design?
A registered design protects the two-dimensional and/or three-dimensional appearance of the whole or part of a product, resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation.
What can’t you register as a registered design?
You cannot register:
- designs that are not ‘new’ (i.e. an identical design, or a design whose features differ only in immaterial details, to one that has been made available to the public beforehand).
- designs that lack ‘individual character’ (i.e. if the overall impression it produces on the informed user does not differ from the overall impression produced on such a user by any design which has been made available to the public beforehand).
- features of appearance of a product that are solely dictated by the product’s technical function, or which permit the product to be connected to another product, so that either product may perform its function.
Thus, when deciding what product design to use and adopt, you ought to consider whether you will be able to get a registered design for that product design. Without registered design protection you may struggle to prevent other traders from using the same design, or something very similar.
Why is design registration important?
There are four main advantages to registering your design as a registered design:
- You are informing the world at large of your legal rights in the design. Registered design registers are open to public inspection. Businesses can use such registers to check if a design they plan to use is owned by someone else and warns them off.
- Registration helps to raise awareness of your design. After all, a design is a valuable asset of your business that you can license to a third party, sell to a purchaser of your design, or a purchaser of your business.
- Registration makes it easier to prevent others from using the same or very similar designs. Registration helps to dissuade others from trading using the same or a very similar design. It is surprising how often this actually happens in practice.
- Registration will prevent somebody else from registering your design, or something very similar, and then accusing you of infringing their registered design.
When you consider the likely cost and damage to your business if somebody else started trading using your product designs, or something very similar, registration offers excellent value for money insurance cover.
What is the difference between registered designs and unregistered designs?
The fundamental difference is that registered designs give you a monopoly right, whilst unregistered designs do not.
If you don’t register your product designs as registered designs, you will have to rely on whatever rights you may have in your ‘unregistered’ designs, in order to try to stop someone from copying your design.
Broadly speaking, a registered design gives you a much easier and broader legal right to enforce than any rights you may have in an unregistered design. The monopoly granted by registered design means that if someone else uses the same or a very similar design then they will be infringing your legal rights, whether or not they knew of your design. You would not have to prove that the infringer copied your design.
Conversely, unregistered designs don’t give you a monopoly in your product design. If someone else uses the same or a very similar design then they will not automatically be infringing your legal rights. To succeed in proving unregistered design infringement, you have to show that the alleged infringer knew of your design and that they copied it.
In the UK and across the European Union, unregistered designs are commonly protected via the law of Community unregistered design, UK unregistered design right and/or overseas copyright laws. These rights arise automatically, but they don’t last anywhere near as long as registered designs (in the UK 10 years maximum, often only 3 years, and for the last 5 years of any 10 year term you must licence the design to any competitor who wishes to use it). Unregistered designs also often only protect certain features of a design and the protection is narrower than that of a registered design.
In summary, registered designs offer you better protection against third party imitators and are thus more valuable to businesses.
Using designs outside of the UK
When a business trades outside the UK it has to treat each country in which it trades as a separate potential legal problem.
For example, if you wanted to use a design for a product in order to promote and sell goods in France, Germany or Indonesia, you would need to ensure that in each of those separate markets you were entitled to use that design and that you would not infringe an existing third party''s rights in that (or a similar) design in any of those countries.
Usually this will involve carrying out (as a minimum) a national (and sometimes state) registered design search in each country, to see whether the design you intend to use (or a very similar design) is already registered. You may also need to carry out a Community registered design search.
Obviously carrying out clearance investigations in each territory has cost implications and can be time consuming. However, it is the only way of ensuring you have sufficient comfort that trading in a particular country using a particular product design will probably not result in you being sued by a third party who has prior legal rights in that territory.
In addition to carrying out country-by-country investigations, if you intend to trade abroad you should consider obtaining registered design protection for your designs in those countries. Usually, a business should obtain national registered designs in the key territories of interest. If you intend to trade in at least two or more territories of the EU, filing a Community registered design may be a more cost effective means of protecting your design.
A Community registered design is a supranational legal right, which covers all the countries in the EU. If you wish to trade in Europe, you should carry out, as a minimum, a search of the register of Community registered designs before commencing trade using a particular product design. This is to check that no-one has registered a Community registered design for the same or a very similar design to the one that you intend to use.
Once you have obtained a registered design for a product design in a particular territory, you will have a certificate that you can show to any third party that subsequently proposes to, or starts to, use your design or something very similar in that territory.
However, holding a registered design does not necessarily mean that you are not infringing a third party''s prior legal rights in a design in a particular territory. Carrying out both registered design clearance searches and internal investigations remains a vital exercise in ascertaining what prior rights exist in a particular territory and what inspired your design team to create the design they came up with (i.e. did they copy someone else’s design?) before you trade there or seek to register your design in that territory.
See Our Services page for information on how Ashfords IP Team can assist you in carrying out clearance searches and in registering your designs.