Before Brexit, registered design protection in the UK was often obtained using the EU Community Registered Design right. After 31 December 2020, registered design protection in the UK can be achieved through the UK’s own Registered Design right.
While the UK and EU design systems include many similarities, there are also some important differences. This article highlights the most significant differences, to help applicants use the UK Registered Design system to their advantage. We discuss several important areas in turn.
Both the UK and the EU systems allow applicants to file multiple designs in a single application with significant cost savings. In the UK, the official fees for filing a UK application containing 1 design is currently £50, whereas the official fee to file an application containing up to ten designs is currently £70, with an additional £20 being charged for each further batch of 10 designs up to the 50th design (assuming in each case that the application is filed online).
EU registered design applications are more costly, but savings can still be made when filing a multiple design application. At present, the official fee for filing an EU application containing 1 design is €350, with a further cost per additional design of €175 up to the 10th design, and a further cost per additional design of €80 for the 11th design and each subsequent design.
Therefore, the cost of filing many designs in a single multiple design application is generally much lower for UK registered designs than for European Community Registered Designs.
Multiple design applications
For EU registered designs, typically all of the designs in a multiple design application must relate to similar subject matter, such that they can all be categorised with the same Locarno classification number (this being a code to identify the category of goods to which a design belongs). As an exception, designs relating to ornamentation can be included in multiple design applications with designs in another Locarno class. There is no equivalent requirement for the designs of a multiple UK design application to all have the same Locarno classification number.
For example, if an applicant wanted to register a series of designs for an armchair, a sofa and an ottoman in the EU, they could file a multiple design application, as each of these could be categorised under Locarno class 6, for seats. However, if they wanted to register a series of designs for a pedometer (class 10), the graphical user interface to be displayed on the screen of the pedometer (class 14) and a charger for charging the battery of the pedometer between uses (class 13), they would need to file three separate design applications. In the UK, the applicant could include all of the designs in the same multiple design application, regardless of what the designs related to.
For multiple UK design applications, the maximum number of designs that can be filed in a single application is 50. This is likely sufficient for the majority of applicants but where it is not, there is the option to file one or more further multiple design applications. In the EU there is no limit to the number of designs in a multiple design application.
Applicants should also consider the number of design views they need in order to ensure the best scope of protection for their design. In many territories where design protection is available, filing seven views is recommended (and in some cases required). In many cases, this will include top, bottom, front, back, left and right elevation views of the product, as well as a perspective view. However, other views might also be important such as additional perspective views, exploded views or views showing detail.
The UK design system allows up to twelve views to be included per design, whereas the EU system allows seven protected views and three further views which an applicant can include, but which are disregarded for the purposes of defining the scope of protection (although they will become part of the public file). The option to include additional views can be advantageous to applicants, particularly where they file further design applications elsewhere, claiming priority from their initial UK or EU design application, as they can only claim priority for views that are included in that initial application.
Whether to include additional views (and which views to include) can also be a strategic choice as it can help to place the design into a particular context. In the UK, if used thoughtfully, additional views can potentially help to distinguish a design application from other designs, showing that it is new and has individual character, as is necessary for the design registration to be valid. For example, one of the twelve views could be used to show detail that it not visible in the other views.
Applications for animations
Registered designs in both the UK and the EU allow for protection of animations, though the definition of an animation is more limiting for UK Registered Designs. In the UK, an animation is any progression of views which is shown sequentially without user input. For a Community Registered Design, an animation can still be protected even if user input is required to progress through the views. This makes Community Registered Designs particularly suited to protecting progressions through different screens of a graphical user interface, even where a user has to select buttons to move between different screens.
Both the UK and the EU design systems allow for deferred publication (in the UK this is referred to as deferred registration). The publication of EU registered designs can be deferred by up to 30 months from the date of filing the application. Conversely, the registration of UK design applications can be deferred by up to 12 months from the date of filing the application.
if an applicant has a pending EU design application on 31 December 2020, for which deferred publication has been requested, it is possible to obtain a cloned UK right also having deferred publication. The maximum period of deferment is the earliest of 30 months from the filing date of the original EU design, and 12 months from date of applying for the cloned UK right. This means that the UK cloned application could be published before the EU application. Applicants in this situation should check whether they are happy for their UK cloned designs to be published within a shorter time frame as part of deciding whether to apply for a cloned UK right.
Aspects of both UK and EU designs can be disclaimed by depicting these aspects in broken lines. For UK registered design applications , the applicant can alternatively or additionally provide explanatory text to limit the scope of the design (a “written” or “verbal” disclaimer) provided that this text is clear, understandable, and correspond to the representation(s) submitted. The use of written disclaimers can be helpful to applicants where they wish to disclaim subject matter that they do not wish to limit the scope of protection of the design. It is often also easier to explain the subject-matter to be disclaimed in writing, than solely through the use of graphical disclaimers (e.g. broken lines).
While it is possible to include a description in applications for EU designs, it is not possible to provide a written disclaimer and as such any disclaimers in EU design applications must be apparent from the representations. Indeed, a description in EU registered designs does not affect the scope of the protection of the design.
It should be noted that the UK and EU design systems do also include many similarities. For example:
- Neither the UKIPO nor the EPO carries out a novelty search for design applications, and this lack of substantive examination means that registration is typically completed within less than a month in both cases, unless formal objections are raised to the format of the drawings (with proper care and preparation, this is rare);
- UK and EU registered designs both have a maximum term of protection of 25 years, provided that renewal fees are paid every 5 years from registration; and
- Both the UK and EU design registration systems allow applicants to make use of a 12-month grace period following a public disclosure of their design, during which applications for the design may still be validly filed.
While the UK and EU design systems offer similar rights in many respects, the differences are important to consider, as these can influence filing strategy and the extent of protection offered by your registered designs.
Particularly for first design filings including many related designs in different classes, or where there is a desire to include more than ten views in the filing for inclusion in priority-claiming applications in due course, a UK registered design application may provide the most appropriate strategy, especially where the UK is expected to be a significant commercial market for the product.