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Design Rights
Your designs may be protected as a registered or unregistered design in the UK and in the European Community ("Community"). A UK design right gives you protection within the UK only whereas a Community design right gives you protection in each country who is a member of the Community without the need for separate formalities in each EC country.
Unregistered design rights are free and arise automatically, whereas registered design rights require registration which attracts a fee and afford the owner of that design protection for a longer period of time.
In the UK, a design will be capable of registration if the design is new and has individual character. If you intend to register a design in the UK, an application to register it should be filed as soon as possible after its creation, but it is sufficient for a design to be filed within 12 months from the date it was first published.
However if the design is unregistered in the UK, it can still be protected if the design is a "design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article". If the unregistered design falls within this definition, it is can be afforded protection provided that the design is original (i.e. not copied) and not commonplace in the design field in question at the time the design was created.
Concerning the protection of Community designs, a design is "the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation". This definition applies to both registered and unregistered designs in the Community. For the design to be protected as a Community design (whether registered or unregistered) the design must also be new and have individual character.
Therefore a design may be anything ranging from the pattern of a material to the appearance of a toy or any three dimensional shape. However, a design will not be capable of registration if it is a computer program, has features which are either solely dictated by its technical function or is necessary to ‘fit' with something else or the design is hidden in the product/article's normal use.
If designs are commercially important to your business, the downside of only owning unregistered design rights is that you can only stop third parties from copying your designs. Therefore, if a third party independently creates the same design as you, you can not stop them from commercialising it. You should always keep evidence of the creation and date of design, as you will need this if you later decide to enforce or defend your design right.
The basic filing cost of a UK design right is around £60 and the basic costs of filing a Community design right is around £350. A UK design and a Community design can be registered for up to 25 years from the date of application (compared to 3 years for an unregistered Community design right and 10 or 15 years for an unregsistered UK design right depending on whether the design has been made available for sale or hire) and gives owners the right to stop other people from selling, marketing and using a design that does not create "a different overall impression" to their registered design.
The number of Community registered design right applications has grown from around 10,000 in 2003 to around 17,500 in 2007, and with this substantial uptake in the Community design system there has been a corresponding down-turn in applications for national registered rights. It remains to be seen what lasting impact this will have.
Furthermore since 1 January 2008 it is also now possible for EU companies, with a single application, to obtain protection of a design not only throughout the EU with the Community Design, but also in the countries which are members of the Geneva Act. Its aim is to make international design right protection simple and affordable.
Once you have registered design rights, you have the ability to leverage commercial value from them. You can exploit your registered design rights by licensing and, if desired, selling to third parties. Depending on the size of your business and importance of designs to it, it may be sensible to police your rights by setting up a design right watching service to monitor third party activities.
You should also be prepared to litigate in the event that a third party is infringing any of your design rights and refuses to cease infringing and/or settle. If you have a strong case and you win, you may be awarded damages by the Court to compensate for your loss. On the other hand, if your case settles before trial, your litigation arguments can give you scope to leverage favourable licence fees or royalties by way of settlement.
We can assist you to assess the commercial need for design registration and, if necessary, obtain registered design right protection. If you are sued for design right infringement or suspect that a third party infringes one your designs (whether registered or unregistered) we can advise on your chances of success, devise a litigation strategy tailored to your business model and where necessary litigate in the Courts.