Since UK design laws changed at the end of 2001, there has been a steady growth in design registrations for branding devices. Why is this happening, and is it a wasted effort or a valuable new source of protection for brands?
Who: The UK Design Registry
When: June 2003
The June 2003 issue of the Compu-mark Newsletter "Question Marks" reported an interesting development since recent changes to UK design laws.
On 9 December 2001, as reported on marketinglaw, the United Kingdom became the first country to implement EC directive 98/71 EC. Intended to harmonise Europe's design registration laws, this made significant changes to the UK rules as to what designs were capable of registration.
The effect of this was that although most understood design registrations to be chiefly available for the design of three dimensional objects, 2D designs for materials such as icons appearing on a computer screen menu seemed, at least according to one Chancery judge here in the UK, to be capable of registration.
Following this, Jan Van Barel, Director of Quality of Compu-mark estimates that over 100 designs have been registered in the UK which are in fact brands. These include a design consisting of the words "My Travel" appearing in two coloured ovals and an Arsenal shield design incorporating the "Arsenal" word and the distinctive cannon motif.
Why this matters:
Getting a design on the UK design register is a much cheaper and quicker process than registering most trademarks and there is nothing stopping a brand owner doing both.
As for whether a design registration of what is essentially a branding device would withstand a challenge in Court, that is a separate question for a different debate. It is quite clear, however, that those looking at a comprehensive brand protection strategy should now at least consider design registration as one possible route to protection. It also means that all those contemplating the use of new branding devices should extend the ambit of the searches that they conduct to a check of registered designs.