I am often asked, if you have patent protection for your innovative product, why register your design as well? Registered designs protect the outward appearance of something, rather than its underlying technical concept. For that reason, registered designs are often dismissed as ‘weaker’ IP than patents. And, where the principal USP of a product lies in some underlying innovative technical concept, that may be true.
So, why register your design?
Even if you have filed a patent application to cover the innovative technical concept, there can, in many cases, be enormous additional value to be gained by registering a design as well.
Early granted IP protection
A UK patent can take several years (usually 4 to 5) from the application date to be granted. In terms of protection in the longer term, this does not matter too much. However, you can only enforce IP once it has been granted or registered. So, if a third party swamps your market with copies f your new product shortly after your own launch, although some pre-court correspondence can be entered into to try and get them to stop, ultimately you would not be able to enforce the patent through the courts unless and until the patent is granted. By which time, the third party copy could have done untold damage to your market and your brand (especially if it is a poor quality or sub standard copy).
UK registered designs, on the other hand, can be registered in a matter of weeks, and, therefore, enforced against this type of early copying. Not only might they enable you to have infringing copies removed from the market (and various online marketplaces) quickly, but they can also be used to stop direct copies of your product from entering the country using IPR border control and customs provisions, which means that if copies are coming from overseas, they could be halted at the border before they enter the market. This is a powerful tool in protecting your business, especially if your main line of business is consumer products and the like.
Brand Protection
If your product looks particularly distinctive (even though the underlying innovative concept is its main USP), your customers will start to recognise it by sight.
What could it do to your market share if a third party were to copy the outward appearance of your product but not the underlying innovative technical concept? People might buy that copy thinking its yours. Not only does would that reduce your market share, but if the product they thought was yours then breaks, fails or otherwise disappoints them, your brand identity and reputation could be seriously damaged.
Consider the Dyson® product range, for example.
Their original upright vacuum cleaner (picture below) was technically innovative because of the cyclone technology that made its suction capability superior to other vacuum cleaners available at the time. BUT, the outward appearance of the vacuum cleaner became widely recognisable almost overnight. If a third party had copied that outward appearance without including the dual cyclone technology, they would not have infringed Dyson’s patent, but could have very seriously damaged their market share, as well as their brand and reputation, if people had bought such a copy unknowingly and then been disappointed by its performance. This is one of the reasons why Dyson also uses registered designs to protect their distinctive product lines (see, for example, their UK registered design no. 2091328 https://www.registered-design.service.gov.uk/find/2091328 for one of the original designs).
Wider Global IP protection at proportionate cost
One of the key benefits of registered design protection is that it is, in general, quicker and cheaper to secure. From a cost perspective, when it comes to overseas IP protection, it may not be feasible to have registered design and patent protection in all of your potential markets. You will naturally want to protect your main markets using (the stronger) patent protection. However, you may then want to consider using (just) registered designs to cover a wider range of (less critical) markets to secure the widest global IP protection possible at a cost that is proportionate to the importance of the various markets.
Graphical User Interfaces (GUIs)
When it comes to computer-implemented innovation, the outward facing GUI is often one of the most important elements in terms of brand identity and recognition (irrespective of what the system does).
With the ever increasing number of apps and consoles being developed, so the need and desire to protect distinctive graphical user interfaces has grown, and the design laws of many territories, including the UK, EU, USA and China, allow for the registration of GUIs. So, if it could be important to your business to ensure that a third party does not try and pass their own app or webapp, say, off as yours by using a very similar GUI to try and ‘fool’ potential customers into thinking it’s yours, then registered design protection could be valuable.
Timing
Timing can be everything when it comes to IP filing strategies.
Your registered design should depict your product as it will be seen by your market, i.e. in its final form, so applications for registered designs are usually filed after (or on the same day as) an earlier patent application protecting the underlying concept.
Registered designs are published once they have been accepted for registration, which (in the UK) usually takes around 6-8 weeks, and sometimes less. So, if you’re not ready to display the new product to the public (because you haven’t launched it yet), you should defer publication at the time of filing the application for registration. Publication can be deferred for up to 12 months from the date of filing the application, and must be requested by the end of that 12 months, or the design registration will lapse.
In contrast to patent applications, which must be filed before there is any public disclosure of your innovation, UK designs can be validly filed within 12 months of their first public disclosure. This applies in a few other territories, including the EU and USA. However, be wary of using these provisions, because they don’t apply in many other countries (e.g. China). For that reason, if overseas design protection is likely to be needed, it is advisable to file a UK design application before there is any public disclosure of the design. You must then file any corresponding overseas design applications within six months of filing the UK application in order to “keep” the UK filing date overseas.
However, there is no ‘one size fits all’ when it comes to IP filing strategies, and we strongly recommend that you consult a qualified IP attorney to help you to decide what is best for your business.
Get Help
Do you need help to devise an optimum IP filing strategy to suit your business needs as well as your budget? If so, we can help. Please book a free initial consultation by emailing vicki.strachan@strachanip.co.uk or visit our website at https://strachanip.co.uk/contact/
