Design rights can be valuable business assets and provide a robust form of intellectual property protection, particularly for small businesses operating in the creative and manufacturing sectors where appearance may be central to the charm of a key product or service.
To help you understand registered and unregistered design rights, we’ve answered some of the most frequent questions we receive on the topic below.
What are design rights and industrial design rights?
Design rights (also known as industrial design rights) protect the appearance of a product, covering aspects such as its lines, contours, colours, shape, texture or materials, or ornamentation.
A design right does not protect the functionality or concept embodied in the product as these are protected by other intellectual property rights such as a design patent or copyright.
What are the two forms of design rights?
Design rights can be registered or unregistered.
Unregistered design rights and copyright automatically protect designs.
However, as these safeguards are limited, it’s best to protect your design by registering it formally. This will provide the exclusive right to make, offer, market, import, export, use or stock any product to which the design has been applied or is incorporated.
The term of protection is initially five years, but this can be extended to 25 years.
How do I register a design right in the UK?
To register a design right, you must be able to show that the design is:
- Novel – An identical design (or a design differing in immaterial details only) must not have been put out in public before the date of application for registration or the date of the earliest application for a patent for a particular invention in any country where the “priority” of such application can be validly claimed (this is known as the ‘priority date’)
- Unique – The design must have individual character. This is a narrower test than the test for novelty, as an ‘informed user’ (defined as a person with knowledge of products in a particular market sector) must be able to recognise the unique elements of the design
To protect the designs of component parts of a complex product, the parts must be visible during the product's regular use.
Before you apply to register a design right, you will need to search the following databases to see if your design is registered anywhere else:
- UK-registered designs
- EU Intellectual Property Office (EUIPO)
- World Intellectual Property Organisation (WIPO)
You can request the Intellectual Property Office to run a search for you with a cost of £24. Up to 12 illustrations can be included in your online application. If you want to include more than 12, you will need to send your application by post. You can find detailed guidance about what you can and cannot include in your illustrations here.
How much does it cost to register a design right?
The cost of applying for design rights are as follows:
Source - Register a design: Send your application - GOV.UK (www.gov.uk)
Will a UK-registered design right protect my design abroad?
A UK-registered design right will only give protection in the UK. To register design rights in an overseas jurisdiction, you can:
- Apply for a Registered Community Design (RCD) covering the whole of the European Union (EU)
- Use the Hague System to apply to several different countries or territories at the same time, through a single application
- Apply directly to each country in which you want protection
What remedies are available for design right infringement
If your registered design rights are infringed, you can bring a claim in court for:
- An injunction to prevent further infringement
- Damages or an account of profits
- An order for delivery up or the destruction of the infringing designs
Unlike bringing a claim for infringement of an unregistered design right or community unregistered design, a registered design right holder, or owner of the design, does not have to prove that the infringement was deliberate.
If you have UK unregistered design rights, you need to provide evidence that:
- You created the design in the first place, and
- The design was deliberately copied
Get legal assistance from LawBite
Design rights are an important aspect of protecting the intellectual property of a product or service.
If you require assistance with registering or defending your design rights, our expert intellectual property lawyers will be able to guide you through the various options available and help you make informed decisions to protect your valuable assets. Book a free 15 minute consultation or call us on 020 3808 8314 to find out more.
