Making the most of design protection

Simon Stokes from Tarlo Lyons discusses what is protected under the new law.

Designs that are new (for example, there are no identical earlier designs) and that have ‘individual character’, can be registered:

A design means the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or the product’s ornamentation.

A product can be any industrial or handicraft item other than a computer program. It can include packaging, graphic symbols, typographic typefaces and parts intended to be assembled into a complex product.

So, although a computer program as such cannot be registered, the visual design of a computer icon or an on-screen display might well qualify as a ‘graphic symbol’.

Functional designs ought to be easier to register. Designs that are solely dictated by the technical function of the product cannot be registered.

There is also a limited ‘must-fit’ exception to registration where the design is for interconnection purposes, although modular products, such as stacking chairs or children’s bricks, are not excluded.

A special regime is in place for the controversial area of ‘spare parts’ – generally the status quo in the United Kingdom will continue but the European Union is obliged to clarify the position by 28 October 2005.

What rights do you get?

The exclusive right to use the design, as well as any design that does not produce on the informed user (not necessarily a design expert) a different overall impression.

Use of a design includes making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

In determining whether a design produces a different overall impression on the informed user, the degree of freedom that the designer had in creating their design shall be taken into consideration.

There is no restriction on the class or type of article that can infringe your registered design – what is protected is your design, and not the product/ article in which it is embodied or to which it has been applied.

There are limited exceptions, for example, if your design is used by someone else for strictly private and non-commercial purposes, or for teaching or experimental purposes.

Once you have put your design on the market in Europe, you will not be able to prevent its circulation within Europe (this is the EC ‘exhaustion of rights’ doctrine).

How long does the protection last?

Up to 25 years from the date of filing: renewal is required by the end of each five-year period up to a maximum term of 25 years.

How do you apply?

By filling in an application form, paying a fee and filing it at the UK Patent Office. The application is then examined and if it satisfies the relevant criteria it will be granted.

As with the old law, many designers may wish to use a specialist in registering designs to advise on registration, handle the formalities required, liaise with the Patent Office during the examination process and co-ordinate any international filings.

Do you need to keep your design secret before filing?

This was generally essential under the old law; under the new law there is a 12-month grace period to allow designers to test their designs in the market before going to the expense of filing.

Nevertheless, others can still potentially ‘get in first’ so you should apply as soon as possible to stand the best chance of protection.

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