All you need to know about registering your UK design

Design rights can sit alongside trademarks, providing a different level of protection to your intellectual property portfolio. Anousha Davies in our Intellectual Property team explores the requirements and benefits of securing registered design rights in the UK.

What do Registered Design Rights protect?

By definition, registered design rights provide legal protection for whole or part of a product, resulting from the features of the lines, contours, colours, shape, texture or materials.  Unlike patents, designs do not protect technical function.  Examples of possible registered designs include product labels, logos, patterns, and the shape of products themselves.  By registering your design, you obtain exclusive rights to use it and can enforce your registration against third parties who may be commercialising a similar or identical design to yours. 

Application Process and Duration

The application process is relatively short in comparison to the trade mark and patent processes.  Once the application is filed, the IPO will examine your application to ensure it meets the legal requirements. Unlike trademarks, the UK Intellectual Property Office do not substantively examine the application or cite similar designs, and so the design is presumed to be valid. Registration can be quick and can often be obtained in a matter of days.

So, what do you need to satisfy in order to have a valid design?

Novelty

Although there is a presumption of validity when filing a design application, your design should not be identical or too similar to any existing designs that have been made available to the public before your filing date.  If you are aware that your design is not ‘new’, there is no benefit to registering it as it will be deemed invalid if challenged.

Individual character

Your design must also possess individual character, meaning it should give a different overall impression to informed users compared to any existing designs.

Disclosure If you have already disclosed your design to the public, you have 12 months to safeguard the validity of your design.  This means that an old design cannot become a valid UK registered design unless the designer disclosed it during the 12-month grace period.  Disclosure to the public can occur online, for example posting a photo of the design in question on social media. 

A recent EU General Court case held that singer and businesswoman Rihanna Fenty ‘disclosed’ PUMA’s design by posting a photo of her wearing one of PUMA’s new trainers on her Instagram feed.  This post constituted disclosure to the public, and therefore destroyed the novelty in PUMA’s design, ultimately making the design invalid.

Although the 12-month grace period can be useful for businesses to test the waters with commercial interest before proceeding with design registrations, the key takeaway is that once a design is in the public domain, you should take steps towards filing a design application to ensure you are in the best position of owning a valid registered design right.

If you wish to keep your design private after filing the application, you may defer publication of your design for a period of 12 months in the UK.

Now that I own a registered design, what are the benefits?

Registering your design grants you a legally enforceable right, allowing you to take action against anyone who infringes upon your design. This protection extends for up to 25 years, provided that you renew it every 5 years.

Fend off copycats

You can use the design number on your products, website or marketing materials to indicate to consumers and third parties that your design is protected.  This can often act as a deterrent for third parties wishing to copy aspects of your design. If you believe your design is being infringed, the registered design number can be useful when initiating take-down notices on e-commerce platforms such as Amazon, as well as social media platforms such as Instagram.

Financial benefits

Registered designs can have significant monetary value, especially if they contribute to the success of your products. Designs can be licensed or sold to generate revenue streams.

Global protection

UK registered design rights provide protection in the UK, but they can also serve as a springboard for obtaining design protection in other jurisdictions through international treaties and agreements, such as the Hague Convention.