Registered designs protect the outward appearance of a product (as opposed to patents, which protect innovative technical concepts and functionality). For this reason, they are often considered to be ‘weaker’ intellectual property rights. However, even if you have a patent application pending, the potential power of registered designs should not be overlooked…especially for consumer products.
Registered Designs in the UK and EU
Unlike patents, which take some years to be granted and have to go through a relatively complex process in the meantime, registering designs in the UK and EU is a comparatively simple administrative process with formal registration usually taking around 8 weeks from the date of application. There is no detailed examination of design applications and, provided the drawings and application documents are complete and in the correct format, issues rarely arise.
This means that, during the early stages of commercialising your product, you could have a piece of registered IP that can be used to enforce your rights against early ‘copycats’ which could otherwise, not only undercut you on price, but also potentially damage your brand if the copies are not only cheaper but of inferior quality.
The Power of Registered Designs
Customs Registration
If you have a registered design in the UK or EU, you can use a customs registration process to enlist the help of Border Force (or their EU counterparts) to stop infringing copies manufactured overseas from even entering your market territory. Click here for more information on the UK Customs Registration process.
Third Party Sales Platforms
If a copy of your product is listed on a third party sales platform such as Amazon, you can report it as an infringement of your registered design, and the copy listing will usually be suspended unless and until the dispute has been resolved to your satisfaction.
Court Proceedings
You cannot enforce an IP right through the courts unless and until it is granted/registered. This can take 3+ years for a patent, during which time any copies in the market could have seriously damaged your market share and/or your brand. There is, of course, pre-court correspondence that can be entered into to try and persuade the infringer to stop, but ultimately you cannot issue court proceedings for patent infringement until the patent is granted…and the infringer’s legal representative will know that. If you have a registered design, however, your options for legal recourse in relation to direct copies are much more robust, and issuing early court proceedings can help to stop infringers before too much damage is done.
Words of Warning
The normal design registration procedure for a UK resident is to file a UK design application first. Any corresponding overseas (including EU) design applications can be filed within six months of filing the UK application to “keep” the UK filing date. It is wise to file your application for a UK registered design before there is any public disclosure of your design. Whilst the UK and EU provide for a so-called grace period of 1 year within which design applications can be validly registered after there has been public disclosure of the design, there are risks associated with this, and it could also invalidate any corresponding applications in other countries that don’t allow for this grace period.
Make sure your registered design covers the most distinctive aspects of your design without necessarily making it too detailed. Show the design in black and white, rather than with any specific colour scheme or surface pattern unless those are, in fact, particularly important to the design.
You can ‘disclaim’ certain, less important elements of your design, where appropriate. A very simple example might be if your new product was a keychain, where the distinctive elements of the design relate to the fob, and it doesn’t really matter what type of keyholder is used (e.g. split ring, carabiner, lobster clasp, etc.). In this case, irrespective of what type of keyholder you actually use in your product, this part of the design can be disclaimed, either by omitting it altogether from the design drawings or showing it in broken lines. That way, if a third party copies the fob but uses a different keyholder, your registered design would still cover it.
Need help?
If you need help with this, or any other intellectual property, matter, please contact us to arrange a free initial consultation by emailing vicki.strachan@strachanip.co.uk or visit our website at https://strachanip.co.uk/contact
