Designs for Life: Registration

Designs are key assets for many businesses and there are several aspects that are vital to success. In this guide from our Designs for Life series, we take a look at registration.

Step 1 - Decide whether to register

The following considerations are often pivotal:

1. Deterrence. Registering a design is an effective means of deterring would-be infringers. The design will appear on the register and the business can advertise the fact it enjoys registered protection on packaging and in literature. The UK has also made deliberate infringement of registered designs a criminal offence, which further enhances the deterrent.
2. Longer protection. UKUDR and CUCD/SUDR only offer 10 and three years' protection respectively, whereas a UKDR can confer up to 25 years' protection. Unregistered protection may be sufficient for products with a short market life, such as those in the fashion world.
3. Easier to enforce. There is no need to prove that the alleged infringer copied a registered design. Subject to some exceptions, infringement of a registered design occurs when a third party uses a design which does not produce a different impression on the informed user, regardless of whether the third party copied or came up with the design independently.
4. Cost. The registration cost is much cheaper than that for patents or trademarks, particularly as a discount is given for multiple filings on the same day. A single UK design costs £50, but filing 10 at once costs £70, and filing each additional 10 designs costs an extra £20, making them £2 each. For pan-EU protection, the first design costs €350, and for nine subsequent designs costs just €175 per design. Subsequent registrations after this are €80 each.
5. Interim measure. Many businesses use registered designs as a stop-gap to provide some protection against infringers while their patents (which give much stronger protection) are being prosecuted.

Step 2 - Decide where to register

1. One of the first considerations should be where a business wants to protect its designs. This will largely depend on the geographical market in which the products are likely to be sold and the result of a cost/benefit analysis of whether wider territorial protection is desirable.
2. The business should ensure it seeks local advice in respect of key jurisdictions falling outside the scope of UK rights. This is particularly so given the less generous grace periods of many jurisdictions, where they exist at all - for many countries, design protection is simply not possible if the design has already been made public, whereas in the UK there is a grace period of a year to file the application for protection, from the date the design is first made available to the public.

Step 3 - Decide when to disclose design and, if applicable, when to register

1. Timing is crucial for both registered and unregistered design rights. If a competitor introduces a design to the relevant public before the business has had the chance to do so, that competitor will take the benefit of any design rights unless a registration is already in progress. However, the business should be careful about of early disclosure for the following reasons:
   1. Once disclosure has taken place, the design will be available to competitors. The business will no longer be able to rely on confidentiality, making design rights the only available method of protection.
   2. CUCD and SUDR only last for three years, and UKUDR for 10-15 years. The clock will start running as soon as the design is disclosed within the relevant territory in such a way that the interested circles can reasonably be aware of the design.
   3. Disclosure will destroy the novelty of a registered design unless registration is applied for within 12 months of disclosure (the grace period, discussed below)
2. For these reasons the business should ensure it has considered the type and duration of protection before disclosure takes place. To this end, all personnel with access to the design should be made aware of the repercussions of accidental disclosure, and clear procedures should be put in place to protect confidentiality.
3. Care should also be taken to control, record and store a disclosure timeline, including all relevant documents and communications.
4. Proof of the timeline may be necessary to rely on unregistered rights or to resist a challenge to the validity of a registered design.
5. The 12-month grace period is a valuable tool and should be used wisely. Used correctly it will enable the business to "test" designs in the relevant market, relying on automatic unregistered rights to fend off competitors before applying for longer term registered rights in respect of any successful designs
6. The business should also ensure it notes ownership of the design on its packaging and literature, thus putting would-be infringers (and consumers generally) on notice of its unregistered rights. Once registered, the business can also advertise that the design is registered to deter third party copying

Step 4 - Decide what to register

1. The scope of a registered design will be determined by the representation of that design as recorded on the register. This leads to a different interpretation to that of unregistered designs, whose scope can be assessed with reference to how the design is implemented on any products.
2. What the business decides to register will ultimately determine the strength of its registered design rights portfolio. The following considerations should be borne in mind in coming to a decision:
   1. Rejected ideas. Does the business need to protect every design concept created by its designers (including rejected ideas)?
   2. Scope. Is protection of the entire product necessary or are there key aspects that should be focused on (or both)?
   3. Registrability. As well as the novelty requirements, a business will need to ensure its design does not consist of non-protectable aspects. For example, a right in a registered design will not subsist in features of a product which are solely dictated by the product's technical function, or in features which must necessarily be reproduced in their exact form and dimensions, for instance, so as to permit the product to perform its function. Legal advice should be sought if these exclusions are of concern as the UK (and European) courts have given guidance on their scope.
   4. Less may be more. Following on from the UK Supreme Court's ruling in the Trunki case^[1], registered designs are considered to offer more protection when represented as simple line drawings, rather than as photographs or CAD drawings. The representations on the registration are what will be covered, so any details such as colour contrast or shadowing which show on that image will be taken into account when assessing a would-be infringer's design. The Supreme Court provided detailed guidance on how best to register designs, and it is worth seeking advice on how best to get broader protection. Another such example was the Kohler Mira case, where dotted lines were taken to show transparency, rather than hidden features as argued by the designer.

Gowling WLG's Brands, Advertising and Designs team is a leading designs law team and are actively involved in shaping designs law. We have acted on a number of the significant, reported designs law cases in the UK over recent years, and have been the proud holders of the MIP Designs Firm of the Year Award for four years (2019 - 2022). We act for a number of design-led clients.

Footnotes:

[1] Magmatic Ltd v. PMS International Ltd [2016] UKSC 12.