Introduction to Registered Designs
Often considered to be the poor relation of patents, registered designs (called “design patents” in some countries) are available to provide protection for the look of an article. Registered designs are commonly associated with protecting the appearance and shape of packaging and consumer products. The design need not be aesthetically pleasing. In many countries, the examination of registered designs is constrained solely to basic formalities, often restricting expected costs to levels that make for a compelling case to even the most hardened of CFOs.
In this article, we summarise the scope of registered designs and then explore the varied ways in which registered designs can bring benefits to your business.
In the UK and Europe, registered design protection is available for the appearance of the whole or a part of an article, which is new and considered to have individual character. The article may be a physical product, such as a drinks bottle, a loudspeaker, or a steering wheel, or may be a virtual rendering, such as the layout of a mobile phone application. Certain aspects of the design can be excluded from the scope of protection, for example using visual disclaimers such as fading out portions of the design, or using broken lines.
Often, multiple designs will be included in a multiple design application to provide design protection of different scopes, covering the same article in slightly different ways. while benefiting from economies of scale as the cost for the second and subsequent design in a multiple design application is reduced.
Although this article relates to the position in the UK and Europe, there are many similarities for design protection in US and China (this changed mid-way through 2021), meaning that similar design scopes can usually be achieved, though the precise design requirements do differ slightly.
By far the most common use of registered design protection is to enjoy the deterrent effect of advertising to competitors and potential competitors that your product is the subject of a registered design. Registered design owners should make clear on the product and/or its packaging and any advertising material that the product is covered by a registered design. A suitable statement might be “Covered by registered designs: www.MyCompanyName.com/IntellectualProperty”. The web-page would then include the registered numbers and countries of all of your intellectual property rights (patents, registered designs and trade marks) and the products and/or brands to which they relate. Alternatively, you could include the registered number of the intellectual property directly on the product.
This puts third parties on notice that your product is the subject of registered design protection, which may deter someone from launching a visually similar product. Of course, such a decision may involve board-level discussion as well as commissioning legal advice on the infringement risk posed by the registered design(s), all of which causes inconvenience and expense to your real or potential competitor.
Registered designs are especially useful against very close copies or identical products, and they are useful to control foreign distributors and manufacturing partners. Although there will be some competitors who will try to carefully design around your intellectual property, problems frequently arise with very close copies and registered designs are useful here. If you outsource manufacturing it is not unknown to find yourself competing against products which in fact are identical to your own product as the manufacturer sells the same product to other channels, either at the same time or when you stop using the manufacturer. Registered designs are very useful against these close or identical copies.
In some countries, customs officials (e.g. UK Border Force in the UK) can stop suspected infringing or counterfeit goods at the border on the basis of several registered intellectual property rights (e.g. patents, trade marks and registered designs); registered designs are particularly user-friendly, since they clearly include an image which will look very similar to the article to be seized. This is not always the case for patents, which can include images of products looking quite different to the infringing article (but which nevertheless functions in the same way as described in the patent).
To take advantage of this service, it is typical to submit an “Application for Action”. More information is available here: https://www.gov.uk/guidance/apply-for-action-to-protect-your-intellectual-property-rights.
Occasionally, Border Force will seize goods without an “Application for Action” being in place. The IP rights holder then has four working days to submit an application to have the goods destroyed. Before Brexit, it was possible to apply for a Community registered design, covering the UK, in this short period, which would be registered within days and could be used to support your Application to have the goods destroyed. However, the UK registered design process often takes longer than this, and therefore can no longer be initiated to support such retrospective applications for action.
Therefore, if you think you may want to rely on seizure of goods by UK Border Force, it is important to have any requires intellectual property rights (e.g. registered designs) in place in advance.
Websites / GUIs
It is common to consider registered designs as being used only to protect the look and feel of physical features of a product. However, even elements of the layout of a user interface (such as a website or in a mobile app) can be the subject of registered design protection.
There are several well-known examples of design features of user interfaces which, were they to be protected, may have significant commercial value for their owners. Consider the “burger symbol” (three horizontal lines) used in many websites for displaying the menu structure. Alternatively, consider the online booking system for choosing timeslots for an online grocery shop. In both cases, customers have been educated over time to understand and expect certain behaviours from these features, making websites including these features more intuitive to use. Each of these features might be considered visually mundane, but being able to control and/or license the use of such design features on websites can have significant value to a business.
In addition to registering brands as trade marks, some brand owners protect important visual elements, such as logos, app icons, bottle labels and packaging decoration as registered designs. Although registered designs afford a scope of protection which is in many ways narrower than the scope of protection offered by trade mark registrations, and although they have a finite lifetime, registered designs are quickly obtained and are available for some visual elements which cannot be protected by trade mark registration.
Registered designs include one or more images which necessarily depict something identical or very similar to the product you intend to launch. Accordingly, registered designs are often far more intuitive to understand than patents, making it easier to demonstrate that your intellectual property right is directed towards your commercial interests. If you want to engage with investors who are not used to assessing the scope of patents, registered designs can be simpler to understand.
Often, registered designs are an important additional intellectual property right, to sit alongside other intellectual property rights such as patents and trade marks. Together, all of the intellectual property rights can be used to reduce the risk that a third party could compete with your business in relation to a particular product, without infringing one or more of your intellectual property rights.
A valid registered design typically provides the owner with the right to make, sell and import an article exactly as shown in the registered design. The owner can also license third parties to undertake the same activities. The situation becomes more difficult where the article in question is within the scope of one or more pre-existing registered designs, in which case a careful assessment of validity of the newer registered design should be undertaken. Even if the newer registered design is valid, it may still be the case that undertaking activities in relation to the newer registered design may be considered an infringement of the one or more pre-existing registered designs unless relevant license(s) is/are in place.
Of course, with registered designs, it is still possible that a real product may incorporate design elements beyond those included in the registered design, and any of those further design elements may infringe other registered designs.
Another consideration for infringement is that, in many countries (including the UK, Europe and the US), whether a registered design depicts an article which is new and has individual character is only assessed when the court comes to consider potential infringement of the registered design. This makes it difficult for third parties to determine whether a registered design, including disclaimed features, and arguably having a broad scope of protection, would be found to be valid.
When patents are unavailable
Registered designs in at least UK, Europe and US (but not in China) include provisions for an applicant to enjoy a twelve-month grace period in respect of their own earlier disclosures. In other words, the validity of the registered design is not put in jeopardy by any disclosure of the same design in the twelve-month period before the registered design application is filed. This grace period is not available for patents in UK and Europe (although a grace period of limited scope is available in the US). Accordingly, where a product has recently been launched or publicised, it may be that registered designs provide the only means by which registered intellectual property rights can be used to prevent third parties copying the design.
It is important to remember that the grace period applies only in respect of your own earlier disclosures. If a third party came up with a similar design, independently of you, that could still be used to render your own registered designs invalid if it was publicly disclosed before your registered design application was filed.
Speed of process
Patents can take years to proceed through the application system. Often, this is an advantage because it distributes the sometimes significant costs of patent prosecution over a longer period, as well as preserving flexibility in the exact scope of protection you want to obtain. Trade mark applications also require six months to two years to reach registration. Sometimes, however, there is a need to obtain granted (or registered) intellectual property protection much sooner, so that infringement proceedings can be started.
In contrast, registered designs can be granted in a matter of days, often less than a month from filing. Indeed, European community registered designs are usually granted in less than a week assuming no formal objections are raised.
In summary, there are many reasons why registered designs may be the right solution for your business, beyond simply wanting to have protection against someone copying the look and feel of your successful product or service.
This article was prepared by Senior Associate, Chris Cottingham; if you would like to discuss any of the points raised, or anything else in relation to your intellectual property, please contact your usual Hindles attorney, or Chris, who will be happy to help.