How to register a design in the UK

In this article, we discuss the process we go through when advising our clients and then preparing and filing an application for a UK registered design, when the application is a first filing (i.e. the first application for a registered design in any country).

1. Determine what product or products should be protected

This step is sometimes straightforward - the designer may have designed a specific product and it may be appropriate to protect the overall appearance of the product. However, deciding what to protect can be more complex. Examples of more complicated scenarios include:

• There are several products to protect which are sufficiently different that they will all require a separate design application.
• The product can be seen as a "set of articles" which are sold together, for example a cutlery set, or furniture set.
• The product is a graphical user interface, or app.
• The product is a complex product made up of several parts which fit together in use.
• The design is a repeating pattern (for example, in a wallpaper).
• The design can adopt different configurations in use, or is an animation.
• Only part of the design is new and the rest of the product has a known design.
• The design may be applied in different forms to different products.

In each of these circumstances, a more considered strategy is required. We have a separate article which explains the difference between a set of articles, a complex product, variations of a design and a design for part of a product.

2. Consider which features of the article(s) should be protected

A UK registered design can protect the whole or part of the appearance of a product arising from features such as the lines, contours, colours, shape, texture or materials of the product or its ornamentation. A decision has to be made whether to protect features of the shape of the product, or aspects of its surface appearance, or a combination of both.

Furthermore, it is often the case that filing a design registration for the whole of a product will lead to an unnecessarily narrow scope of protection. It is often not an infringement of a UK design registration to reproduce a part of the registered design, the test for infringement considers whether a potentially infringing article presents the same overall impression on an informed user as the registered design. It is therefore common to want to protect only part of a product, for example by disclaiming other parts of the product.

3. Decide how many design applications to file

In the UK, it is possible to file for up to 50 different design in a "multiple design application" and it is frequently helpful to use multiple design applications to secure broad protection in a cost-effective way. A multiple design application can be used as a cost-effective way of submitting several applications to protect more than one product at once. The UK allows the designs within a multiple design application to relate to entirely different products, as long as they have the same owner.

A powerful use of multiple designs is to obtain multiple overlapping rights which protect the same product in different ways - for example registering the shape of a product, without any colour limitation and also registering the product with parts in colour; or registering the design of a small part of a product and also registering the design of a larger part of the product. The reason to protect the same product with multiple designs is that some potentially infringing designs may fall into the scope of some design registrations and not others, depending on which features are or are not reproduced. Furthermore, it may turn out that some design registrations are valid and some are not.

4. Decide on the views to file for each design

With a UK design application, it is possible to file up to 12 different representations (views) of the article to be protected. For many products, it is appropriate to file views from each of the 6 cardinal directions and a perspective or isometric view. However, it is important that all features of the design are visible in at least one representation and it is sometimes necessary to include additional representations in order to fulfil this criterion. For 2D designs a single view is often appropriate.

5. Decide what to leave out and what to disclaim

Although it is sometimes appropriate to file images of a product as a whole, it is often desirable to remove some features of the product which are not relevant to the design. An example would be screws or rivets (unless they are an important part of the design), details of the underside of a product, branding, text etc. It is important to be careful of unintended consequences, for example removing features may give the impression that a surface being smooth is part of the design.

Features for which protection is not sought can be disclaimed, for example using dashed lines or blurring. The UK IPO does allow a written disclaimer to be filed but we recommend trying to file representations which make it clear what the scope of protection is even without a written disclaimer, especially if the application will be used as the basis for priority claiming applications in other countries, because most other countries don't allow written disclaimers.

For products which include colour, there is an important step of deciding whether to file in black and white line drawings, grayscale or colour. Sometimes we will advise filing for two or more of these options in a multiple design application.

6. Prepare the design representations

For many products, the gold standard approach is to use a patent draughtsperson who is familiar with the requirements for registered designs to produce the representations. This ensures that they meet formal requirements and is especially helpful where the UK design application is to be used as the basis for priority claiming applications in other countries which have stricter or different rules. However, designers frequently prepare their own representations to keep costs down. CAD files can be useful to prepare representations, however care is required as it is common for representations which are prepared from CAD files to include too many lines and other features. For some products it may be OK to use more informal images, even photographs of the product (on a neutral background).

It is important that design representations show one view per image file; show only the product to be protected, without extraneous items or backgrounds; and don't try to mix different types of image (e.g. line drawings, colour renders, photos). Repeated patterns must be shown in full and with sufficient repetition. Words and measurements are avoided. Lines should be of consistent thickness. It should be possible to see all features of the design and the representations must be consistant.

7. Filing the UK design application

We usually file applications for a registered design through the UK IPO online web filing service. Rarely, paper filing is useful where more than 12 views are required. It is necessary to specify the type of product (although protection is not limited to that type of product) and the applicant's name and address. The designer's details are not given in the UK, although they are in most other territories. Different product types may be included in the same multiple design application. An official fee is payable which depends on the number of designs for which protection is sought and whether deferred publication is requested.

The UK has a one year grace period enabling an application to be validly filed up to one year after first disclosure of the design. Nevertheless, it is risky to rely on this and it is advisable to file a UK design application before the product has been disclosed in any way, to avoid that disclosure, or other designs by third parties which may be "inspired by" your design from invalidating the design. Many other countries do not have grace periods and so any design application which is being filed to obtain a priority date internationally should be filed before the design is disclosed.

An important question is whether or not to request deferred publication. If deferred publication is not requested, the design may be registered and appear online very quickly. It is then open to public inspection, where it may be viewed by competitors, journalists etc. and becomes prior art which can prevent you from obtaining other IP protection, particularly a patent. It is however possible to request that publication is deferred for up to one year. In this case, there is a separate later step of requesting publication which must be carried out within the one year period.

8. Examination

UK registered designs are not examined to determine if they are original. It is actually quite difficult to assess the validity of a UK registered design without a detailed understanding of the "design corpus" at the time the design application was filed. However, the UK IPO do carefully review applications to ensure that they meet formal requirements and will raise objections if these are not met. In this case, an examination report is issued with a deadline for response.

9. Registration

Once any objections have been resolved (and publication has been requested, if it was deferred) an electronic certificate issues and the design is published online.

10. Foreign filing

If the applicant wishes to do so, it is possible to file registered design applications in most other countries of the world within 6 months of the filing date of an initial application for that design and for those later applications to "claim priority" from the first application and so be treated when assessing validity as if they were filed on the same date as the initial application. There are quite significant differences between the law and requirements for design representations between different countries and if we are aware that foreign filing is likely we may include additional designs or representations with an initial filing which also meet the rules of other countries where the applicant is considering seeking protection.

At Hindles we regularly file registered design applications for designers who want to obtain the best possible protection for their designs. Our fees to manage the entire process set out above start from £960 + VAT (excluding official fees and draftspersons charges, where required) for a single design, and usually amount to several thousand pounds for a carefully thought-out filing program incorporating multiple designs to maximise the scope of protection sought. If you would like to have professional representation for your registered design application, please do not hesitate to contact us.