Protecting product designs
What product designs can be protected?
The legal protection for product designs is all about the physical appearance of the whole or part of a product. How an inventive product works and the branding applied to a product may be protected by different intellectual property rights, namely patents and trade marks respectively.
Design rights are territorial, with different forms of protection within the UK, the EU and other countries.
In addition in the UK and EU, there are 2 levels of protection, depending upon whether or not a design has been registered with the relevant intellectual property office.
The most effective form of protection for product designs can be obtained by making an application for a registered design, either for the UK alone or for all 28 member states of the EU.
In each case:
- Any design which is new and has individual character is capable of being registered. Individual character means that the overall impression produced by the design on someone who is familiar with designs in the relevant sector (this person is known as ‘the informed user’) is different to the overall impression produced by any design available to the public before the date on which the application is filed.
- Applications cannot be made for designs that are dictated by their technical function or in respect of features which are required to enable the designed product to fit or match with other products.
- Registered design applications are relatively inexpensive and can be obtained very rapidly.
- Once registered, the registered right initially lasts for 5 years and can be renewed for further periods of 5 years up to a total of 25 years.
- The owner of a registered design has the exclusive right to use the design in question and any design which does not produce a different overall impression (on the informed user).
Automatic or unregistered protection
Although less valuable than a registered design, these forms of protection arise automatically as soon as a new design is recorded in a design document or prototype.
Aside from the automatic nature of unregistered protection, the most important difference is that the unregistered rights only restrict third parties from copying the design in question.
There are 2 slightly different forms of unregistered protection in the UK and elsewhere in the EU:
- UK Unregistered Design Rights (or UDR):
- This applies to an original or new product design which has not been copied from another design. Surface ornamentation as well as designs which must fit or match other products are excluded.
- The UDR potentially lasts for 10 years after the first marketing of the product.
- In the last 5 years of the unregistered protection, third parties are entitled to ‘Licences of Right’ in respect of any act which would otherwise infringe the UDR. If the parties cannot agree the terms of a Licence of Right, such as the licence fee or royalty, the terms will be imposed by UK Intellectual Property Office.
- EU Unregistered Community Design (or UCD):
- This applies to product design which is new and has individual character (on the same basis as a registered design).
- The UCD lasts for only 3 years after the design was first made available to the public anywhere in the EU.
The owners of unregistered designs have up to 12 months from the first marketing of the product to make an application for a registered design. After this period, the fact that the unregistered design has been made available to the public will mean that the design is not sufficiently new to be capable of being registered.
We have been helping clients across a number of different sectors, from advanced engineering and manufacturing businesses to retailers, to protect their product designs. In particular we have:
- Advised on numerous unregistered design right claims for major domestic lighting manufacturer and retailers.
- Acted for the claimant in infringement proceedings in relation to unregistered and registered design rights in a street lamp.
- Advised upon the successful conclusion of Intellectual Property Enterprise Court proceedings relating to the alleged infringement of a registered design for a mobility aid.
- Acted in court proceedings over the infringement of unregistered design rights in a luggage trolley.
- Advised in a registered design dispute concerning motor vehicle accessory.
- Successfully settled a registered design infringement claim in respect of a motor vehicle.