Design FAQs

WHAT IS A DESIGN?
For the purpose of registration 'design' means the appearance of the whole or a part of a product resulting from the features of, in particular: lines, contours, colours, shape, textures, materials or ornamentation.

WHAT IS A PRODUCT?
A product can be any industrial or handicraft item, including parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs. It is important to realise that whilst a design at its inception relates to a product the scope of protection is not limited to that product or even similar products but extends to any product in which the design is used.

WHAT DOES A DESIGN RIGHT PROTECT?
Design rights protect the outward appearance of a product or part of it resulting from the lines, contours, colours, shape, texture, materials and/or its ornamentation as long as it fulfils the protection criteria.

CAN ANY DESIGN BE REGISTERED?
In order to be registered as a UK national or community design, the design must: - Comply with the definition of design - Relate to a product - Not relate to features dictated by function - Be new - Have individual character (i.e. whether the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has previously been made available to the public) - Not be contrary to public policy or morality Specific rules apply to "complex products". Not all designs can be registered - see FAQ 'How else can a design be protected?' below

WHAT PROTECTION DOES REGISTERING A DESIGN PROVIDE?
A registered design gives the exclusive right to use and prevent making, offering, putting on the market, importing, exporting, using or stocking for such purposes, products incorporating the design, which do not produce a different overall impression on the informed user.

HOW ELSE CAN A DESIGN BE PROTECTED?
Designs can be protected by copyright, for example, where the design is an artistic work. Designs can also be protected as unregistered design rights. Typically the right arises in designs of functional items (e.g. a printed circuit board). Unregistered design rights do not require registration, although for the rights to arise, the design has to be reduced to material form. Unregistered design rights prevent the commercial use of the design only if the use results from copying. This simplicity does, however, have its downside because in practice the holder of the unregistered design right may struggle to prove that the protection exists. Unregistered rights can be protected in the UK ("Unregistered UK Design") or throughout the European Community ("Unregistered Community Design"). In the latter case, the protection would be unitary throughout the European Union. Unlike a registered Community design, you do not have to file an application to protect an unregistered design.

WHY IS IT IMPORTANT TO REGISTER DESIGNS?
The design or shape of a product can play an important role in company or product branding and image and may become valuable asset with a financial value. This intellectual property can then be sold or licensed, providing a source of income. Registering a design can deter others from copying and exploiting it and provides a legal course of action to prevent this. There are three main advantages to registering a design: - It provides some degree of certainty - The rights conferred by registration tend to be stronger than with unregistered rights - It provides for a longer protection than for unregistered design rights

HOW IS A DESIGN REGISTERED?
The registration process involves completing the correct form and sending it along with the fee sheet forms, a copy of illustrations of the design and the correct fee to the UK Intellectual Property Office (UKIPO). Once the application has been received by the UKIPO, and if there are no objections or questions about the design, it should be registered within three months. After receiving the application an examiner will check it and decide if further questions need to be answered or if there are any other objections to the design. If there are objections or questions the examiner will set a deadline by which these should be dealt with, usually between two and three months. If the examiner does not receive a response within the deadline the application will be refused. A design application can be refused on certain specified grounds. If the examiner does not object to the design or if their objections have been overcome the design will be registered. Upon registration, the owner will be provided with a certificate and the design will be published. Restrictions on access to the register list for designs for wallpaper and lace is two years, and for textiles three years. Protection by way of a registered Community design is acquired by application to the Office of Harmonization in the Internal Market (OHIM) in Alicante or directly through the UK IPO. The procedure before the OHIM follows the same pattern. Provision does exist for the registration of secret designs where the application can remain unpublished for 30 months. This can happen if it is felt that publication would "jeopardise the success of a commercial operation involving the design". UK or Community designs can be registered cumulatively or as alternatives. This is often used by the automotive industry.

WHICH ROUTE TO CHOOSE?
For businesses operating solely in the UK it is sufficient to register a UK trade mark. However, where businesses based in the UK have operations which extend outside into European Union consideration should be given as to whether there is an advantage to registering a Community design.

HOW LONG DO DESIGN RIGHTS LAST?
A design will be initially registered for five years. It can be renewed for not more than four further periods of five years.