Designs: How to Protect your Design This leaflet provides basic information on some areas of design protection. Intellectual Property Office is an operating name of the Patent Office
This booklet provides basic information on some areas of Designs. It is not a reference book and has no legal authority All information contained in this document was correct at the time of going to print, and is available in alternative formats on request. For further information please visit our website at:- www.ipo.gov.uk or contact us on:- 0300 300 2000
What is a Design? A design protects the visual appearance of a product or part of a product. A number of factors can affect the appearance of a product including shape and contour, configuration, textures, materials and colour. In the UK there are two ways of protecting your design. You can either rely on Design Right or you can apply for a Registered Design. What is the difference between Design Right and a Registered Design? Registered Design: A Registered Design gives you total rights of ownership over the appearance of a product or just part of a product. A Registered Design can last up to 25 years providing you pay your renewal fees every five years. Unlike the Design Right a Registered Design will allow you to protect both 3D and 2D features of a design. If you wish to protect a pattern that you intend to apply to wallpaper or textiles for example a Registered Design would be appropriate. A Registered Design can be sold or licensed. Additionally it may be easier to stop people from copying your design as the mere existence of the registration alone can act as a deterrent. If you feel your Registered Design is infringed you may challenge and the onus will be on the third party to prove they have not infringed your rights. To benefit from Registered Design rights you will need to make an application to the Intellectual Property Office. 1
Design Right (Unregistered Design): A Design Right is an automatic right, (i.e. you do not have to apply to protect it). Design Right protects the shape and configuration of an item alone, therefore only 3D items are covered. You cannot rely on Design Rights for 2D features such as a pattern. A Design Right is an intellectual property right like any other and you are entitled to sell it or license it. Design Right lasts either for 10 years after you have first marketed the item, or 15 years from creation of the item, whichever is the earliest. For the last five years of this period a Design Right is subject to a License of Right. This means that anyone is entitled to a licence to reproduce your design. They will however have to come to an agreement with you over what costs will be payable for this. If you are relying on Design Right then it would be advisable for you to keep a note of when the design was first recorded in material form or when articles made to the design were first made available for sale or hire or otherwise disclosed to the public. This is recommended because if you believe that someone is infringing your rights you will have to prove the existence of those rights. Infringement cases will be heard by the courts. However the Intellectual Property Office will hear some cases regarding the subsistence of Design Right, (i.e. where there are disputes over payments under a License of Right). When taking action against infringement of a Design Right the onus is on you as the owner to prove that your design has been deliberately copied. 2
Registered Design Application to be made to IPO Lasts for up to 25 years Onus on other party to prove they have not infringed your rights You obtain a grant certificate from the IPO evidencing your rights Rights are exclusive to you and licenses would need to be authorised by you Published in our Designs Journal and on our Register Design Right (Unregistered Design) Automatic right Lasts between 10-15 years Onus on you to prove intentional copying. You have to show evidence of the existence of your rights License of Right automatically granted to other parties in the last five years Not stored in any register Considerations you should make before applying to register a Design Novelty Your design should not be the same as any design which has already been made publically available. Your Registered Design could be challenged if someone feels it is not new. We therefore advise that you search our register, available on our website, prior to making an application. If you prefer we can do this for you if you file a form DF21 and fee of 25. We will conduct a search for identical designs registered in the UK alone. We do not search for unregistered designs or designs registered outside of the UK. Please note that we do not conduct a novelty search when you file an application. This service is only provided if you request it by filing the DF21 and fee. 3
Reasons for refusing an application Your application will undergo an examination once it has been filed. We will check to see that it complies with our requirements and if not we will raise an objection. There are a number of reasons for objecting to an application: - If the design is dictated by how a product works, (i.e. the design has to be this shape/size etc else it would not work). - Offensive designs are not allowed. - If a design contains a protected flag or emblem, such as the Red Cross or an Olympic symbol. - If the design is merely a concept or an idea, (i.e. an item that includes a variable element such as an interchangeable logo). - If your drawings are not presented in an acceptable manner. Deferring Publication You can choose to defer the publication of your application for up to 12 months from the date of filing. This allows you to secure a filing date whilst also giving you more time to market your product or to apply for a patent before publically disclosing your design on our website. The initial fees for a deferred application are less. However you will be required to file a form DF2C and a further fee within 12 months in order that your design becomes published else your application will be lost. More than one Design If you wish to protect more than one design, or you have a number of variants of the same design which you would like to protect, you could benefit from a reduction in fees by filing a multiple application. This means that you file more than one design under the same application form. 4
How to Apply to Register a Design: Application Form The application form you will require is a DF2A and is available via our website. The form is easy to fill in. The most important information you should provide is as follows: Page 1 Box 2 Please inform us how many designs you are applying to protect. Box 3 You must provide us with the full name and address of the applicant. This may be an individual or a company. If the applicant is a company you should inform us where this company was incorporated. Box 4 If you have an agent or an alternative address for correspondence purposes you should provide details in this box. Box 6 Please ensure you sign the form, your application cannot proceed if you do not. Box 7 Please provide a contact name and telephone number, many queries can be quickly cleared up if we are able to telephone you. Page 2 Box B You should tell us what your design is, for example, "watch" or "pen". If appropriate you should also inform us what you intend to apply your design to. If you have a logo then you would state logo for stationery. You are not bound by the statement in this box and are able to use your design in other ways. If we feel this statement is not clear we may amend it. Box E You may provide a brief description of your product if you wish but this is not compulsory. Box F List any disclaimers you wish to add. For example you may wish to disclaim colour or materials. Alternatively if you are seeking to protect just a part of a product you should list this in this box. Box G Please inform us whether you wish for your application to be published immediately or if you would prefer for it to be deferred. Box H If you have an earlier Design Registration outside of the UK you can claim priority from it providing your application is being made within 6 months of the filing date of that earlier Design. 5
Drawings You must provide us with a single set of representations of your design. As these representations will be scanned once they are received, it is in your interest to provide the best quality images possible. Your representations should be presented in the following way: - Either line drawings or photographs. - Should show only the design to be registered, (photographs should show the design with no background detail). - Should show the design as it actually looks to the eye. - Be placed on plain A4 paper. - Should not include any technical details such as dimensions. - If protecting the look of the entire product you should show all relevant views, e.g. front, back, both sides, top and bottom. - The only text used should be view designations, (i,e. top view, side view), or disclaimers, none of which should obscure the design itself. - If protecting a pattern ensure that your representation shows the entire design including repetition of that design. You should also state the following on the representation page: Repeating surface pattern. - If you intend to protect part of the product only please circle the area requiring protection in red and state the following on the representation page itself: Protection is sought for the area circled in red. - Any disclaimers listed at Box F on the application form to be placed on the relevant sheet of representations also. You should disclaim any elements shown that are not part of the design. - Separate sheets should be used for different designs if filing a multiple application. Remember keep it simple all we want to see is the design alone. 6
Forms and Fees Needed to Make an Application All of our forms are available via our website at www.ipo.gov.uk The main forms that you will use in relation to making your application are as follows: DF2A application form for a Registered Design: Application to be published immediately: 60 (For a single design or for the first design in a multiple). 40 (For each additional design if filing a multiple). Publication to be deferred: 40 (For a single design or for the first design in a multiple). 20 (For each additional design if filing a multiple). Additional forms you may need to use: DF2C request to publish an application if publication was initially deferred on the DF2A - 40 per application. DF21 request for us to search the register, (usually submitted prior to you making an application) - 25. This form is optional, please refer to "Novelty" on page 3. 7
Do my Design Rights protect me abroad? A Design Right or Registered Design protects you in the UK only. If you are intending to trade in other countries you should seek further protection. If you are interested in gaining rights within Europe you can rely on an Unregistered Community Design. This is an automatic right which lasts for three years. Alternatively you could apply for a Registered Community Design which will provide you with cover through the whole of the EU. For further information on this you should contact the Office for Harmonisation in the Internal Market, (OHIM). You can visit their website www.oami.europa.eu If you wish to protect your design in only some of the countries in the EU or in countries outside of the EU you can make applications to each individual country. Alternatively you could apply through the Hague System which covers 55 countries or territories. A single application can be made to the World Intellectual Property Organisation, (WIPO). You can visit their website www.wipo.int 8
Further Information This booklet aims to provide you with brief information on designs. For further information please refer to our website www.ipo.gov.uk For further information you can contact our Information Centre on 0300 300 2000 where you can expect a friendly, professional service from our team of dedicated advisors. (Calls to 0300 numbers are charged at your network provider s standard national rate). Our Office hours are 09:00 to 17:00 Monday to Friday, excluding Bank Holidays. Last year we answered 83% of calls within 20 seconds. For legal advice you can contact: The Chartered Institute of Patent Attorneys www.cipa.org.uk 0207 405 9450 The Institute of Trade Mark Attorneys www.itma.org.uk 020 7101 6090 Or email us at Information@ipo.gov.uk We will respond to your email within one working day. 9
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Other Publications Patents 1. Patents: Essential Reading 2. Patents: Application Guide 3. Patents: Basic Facts Designs 4. How to Apply to Register a Design 5. How to Protect your Design Copyright 6. Copyright: Essential Reading 7. Copyright: Basic Facts Trade Marks 8. Trade Marks: Quick Facts Additional 9. Non Disclosure Agreements 10. Licensing Intellectual Property 11. Agreeing a Price for Intellectual Property Rights 12. Choosing the Right IP Adviser 11
Intellectual Property Office Publications order form Name: Address: Phone number: Fax number: E-mail: Any other comments you may wish to add: All Publications are available through the Intellectual Property Office Website: www.ipo.gov.uk or by phoning our Information Centre on 0300 300 2000 To order any of the publications overleaf, please tick the box next to the ones you want, fill in your name and address, and return the form to: Information Centre, Concept House, Cardiff Road, Newport, NP10 8QQ.
Concept House Cardiff Road Newport NP10 8QQ Tel: 0300 300 2000 Minicom: 0300 0200 015 Fax: 01633 817 777 www.ipo.gov.uk For copies in alternative formats please contact our Information Centre. When you no longer need this booklet, please recycle it. Published: May 12 DPS/MWL-09-12