Making the most of design protection

From 28 October, the Government is expected to bring into force a new law protecting designs. A number of types of design will now become eligible for registered design protection for the first time.

To take best advantage of the new regime, designers need to look again at whether their designs should be registered and review the situation on an on-going basis.

Although designs will continue to benefit from copyright, unregistered design right, trademark, patent and ‘passing off’ protection, where available, applying for a registered design under the new regime can give significant and highly valuable protection.

Registered rights are generally easier to enforce than unregistered ones – for one thing there is no need to prove copying.

The background to the new law is the 1998 European Union Directive on the Legal Protection of Designs. After much debate and lobbying, by the automotive industry in particular, this directive finally harmonised how designs can be protected by registration across Europe. UK designs have been protected by registration under the Registered Designs Act 1949, and before that under earlier legislation.

The directive requires changes to the 1949 Act and this will be achieved through the Registered Designs Regulations 2001 (see www.patent.gov.uk).

Although a number of industrial designers have used the old Act to some benefit, registered design protection in the UK has been the Cinderella of intellectual property law. To get a design registered, it had to be new (‘novel’), be applied to a specific ‘article’ by an industrial process, and have features of shape, configuration, pattern or ornament that have an aesthetic appeal (‘eye appeal’).

Once registered, a designer would have a right, lasting up to 25 years, to prevent anyone else from using the design on products for which the design had been registered. A number of these requirements are now swept away or revised, making the revised right relevant to more than just the classic industrial designer.

Software, Internet and graphic designers as well as craftspeople may be able to get enhanced protection for their designs under the new law. Industrial designers also potentially have greater protection.

The Registered Designs Regulations 2001 are not the end of the story. The EU is currently trying to finalise the legislation to establish a registered Community Design. This will be consistent with the new UK registered designs law.

Designers will be able to file one application with the EU Designs Registry in order to get a registered right enforceable across the EU, removing the need to file in each member state. This will operate in a similar way to the very successful Community Trade Mark established several years ago.

Designers and their legal advisors will be busy over the next few years, taking advantage of these developments, and pushing untested new laws to the limit. UK designers need to make sure they do not lose out in the race for protection that is about to begin.