Since 9 December 2001 the landscape of design registration in the UK has changed radically. Maybe now this under-used right will get the use it deserves.
New Law: The Registered Designs Regulationsstered Designs Regulations 2001
UK law protects designs from being copied in three basic ways. There is copyright, which gives protection automatically, without the need for any registration process, design registration, which requires registration with the Patent Office, and lastly unregistered design right, which like copyright, applies without any registration. Which one applies when? Broadly, to qualify for copyright protection, an article’s design has to be a work of “artistic craftsmanship.” As the phrase implies, the courts will look for a desire on the part of the creator to produce a work of art. So with all due respect to the world of design, for most industrial design this is not going to apply. Design registration has historically been for designs for articles which have “eye appeal,” are novel and have not been made public before the registration papers are filed. Finally, unregistered design right tends to sweep up most other original designs.
Design registration is usually used for package shapes, toys, mobile phones and watches. The process of getting a registration is relatively cheap: £60 to file and renewal fees every 5 years, running currently at £130, £210, £310 and £450 for respectively the first, second, third and last renewal. Getting a design registration is also quicker, at possibly just a few weeks, than trade mark registration (6 to 18 months) and patenting (2 years or more).
Still, up until now, design registration has been the cinderella of registerable rights in the UK. In 2000 only 9,380 design registrations were applied for compared with 31,412 patents and 75,957 trade mark registrations. Now, however, things may change.
What will change:
With effect from Sunday 9 December 2001 the Registered Designs Regulations 2001 have been in force in the UK. These make fundamental changes to the design registration system and, as they are driven by an EU Directive, all other EU states are currently in the process of introducing similar new rules.
The most important change will be that from now on, design registrations will be available for far more than 3 dimensional articles. Industrial or “handicraft” designs including get-up, graphic symbols including computer icons and many on-screen displays, and typographic typefaces are now all potentially registerable. So much was confirmed in a recent case in Chancery. Here the court took the new Directive into account and adjudged that there were no fundamental reasons why the icons on the main menu of Apple computers should not be capable of registration as designs.
Also, the changes have scrapped the old rule that designs had to be kept secret before filing. Now, a designer can go public with his design for up to twelve months before filing a registration application and still not lose his chance of a registration. Also out is the old “eye appeal” requirement. In its place is a rule that a design merely has to have perceptible features of appearance. Also, the old “novelty” rule has been replaced by an “individual character” requirement. In other words, the "overall impression on the informed user" must differ from the impression created by any pre-existing design.
All these changes make it inevitable that design registration will become more popular in the UK and probably the rest of Europe. Flowing from this will be an increased need to check the design register before finalising any packaging, computer icon, container get-up or marketing material content that might otherwise be registerable as a design. Better still, design owners should consider putting a continuous watching service in place. This can alert you should any attempt be made to register a design which is too close to your own. Registered design right is a form of monopoly right, so use of a design that turns out to be the subject of a conflicting registration will still give rise to an infringement even if the user had no idea whatsoever of the existence of the previous design registration.
Clearly, another result of the new rules will be that design right infringement claims will be more common, so insurance policies must be checked to ensure that such claims are covered. And last but not least, those involved in commercial design should be more attuned to the possibility of registering their output. They may find that the step pays off handsomely provided they trouble to pay the renewal fees!
Timetable: The new rules have been in force since 9 December 2001