Too often, I see businesses not exploiting registered designs to their greatest benefit, particularly when deciding how many designs to include in a registered design filing.
Registered designs can be used to protect the visual appearance of a 3D product, a decorative surface pattern, or the user interface of a software app. In the UK and Europe, owners of (valid – more on that later) registered designs have the exclusive right to produce and sell products within the scope of the registered design.
On the face of it, registered designs offer very narrow protection, only covering articles which are sufficiently similar to the images depicted in the registered design to not produce a “different overall impression” on an “informed user”.
In many countries (including UK, Europe and US), registered design protection allows portions of the design to be left out of (referred to as “disclaimed” from) the definition of the article; broken lines or shading is used to indicate the portions to be left out in the images forming part of the registered design. In this way, protection can be provided against infringing articles having only certain key features in common with the article shown in the registered design.
As one might expect, the greater the proportion of the design which is disclaimed, the greater the number of design variations which will be within the scope of the registered design.
However, as mentioned above, registered designs must also be valid to be enforced. To be valid, among the requirements are that a registered design must be new and it must have “individual character”, which is to say that it must give a different overall impression compared to any other designs which are already known. The more features of the design left out from the definition of the article, the more likely it is that the remaining portions of the design would give the same overall impression as the earlier designs. As a result, the registered design may be found invalid.
This creates a dichotomy which encourages registered design filers to think carefully about those features to be included in the registered design and those features to be left out of the registered design. Include too many features and the registered design is likely to be valid, but to cover only designs which are particularly similar. Include too few features, and the registered design is likely to cover many different designs, sometimes only having a passing resemblance to the original article, but is also likely to be invalid.
As a further consideration, the case law supporting the interpretation of scope and validity for registered designs is vastly under-developed in many jurisdictions compared with the similar considerations for patents and trade marks. As a result, it is notoriously difficult to obtain clear, robust legal advice on the scope and validity of registered designs, particularly in UK and Europe. Even though a broad design may seem likely to be invalid, the courts may very well decide differently in a particular case. This means that even very broad designs can be considered a non-negligible risk in the boardrooms of your competitors. Indeed, there are a significant number of registered designs on the database of the European Union Intellectual Property Office which show all of the features of the design in broken lines. The potential scope of these designs is a topic for another article (or some legal advice for the board of a worried competitor).
As many design practitioners are aware, some of the best results can often be achieved through a strategy of filing, two, three or even more registered designs with different mixtures of features being included. The UK, Europe (and indeed the Hague agreement for pursuing registered designs in multiple jurisdictions through a single filing) also offer significant discounts on the fees for including additional versions of the design in the same registered design application (referred to as a multiple design application).
Accordingly, if you have a product where there are new and distinctive elements of the visual appearance and you think there is commercial value to your business in preventing others launching products with similar features, I would regularly advise filing multiple registered designs. There is significant time and cost in preparing a registered design filing, including choosing the correct views and features to include, and it risks being wasted where only a single version of the design is then included.
Another reason to include additional designs in a registered design filing is to establish a priority date for designs in a form which is acceptable to the potential future countries of interest. Unlike patents, the drawings requirements for registered designs vary quite significantly between different countries; drawings which would be optimal for UK and European design protection may be completely unsuitable for use in China, US or Canada.
It is sometimes said that registered design protection is the poor cousin of patent protection, offering a low-cost route to “hit-and-miss” visual protection compared with the higher costs associated with patent protection for functional concepts. As the article above demonstrates, there is frequently more to it.
Author: Chris Cottingham, Director