How is a registered design applied for?
An application for registration of a design is made to the UK Intellectual Property Office, www.ipo.gov.uk. Priority may be claimed from an earlier design application filed within six months of the UK application in a convention country.
The application must be made by the proprietor of the design. The proprietor is the author of the design except where:
- The author is an employee and the design is made in the course of employment. The employer is the proprietor.
- The design is commissioned. The commissioner is the proprietor.
- The design is assigned. The assignee is the proprietor.
If unregistered design right subsists in the design, the design right owner must make the application for registration.
The application is examined and cannot be refused by the registrar unless:
- The wrong applicant makes the application.
- The design fails to meet the criteria for registration.
The date of registration is generally the date of filing the application.
Proceedings can only be taken in respect of infringements occurring after the certificate of registration is granted (s. 7A(6) RDA).
The procedure for obtaining registration of a design is usually quick and relatively inexpensive.
What is a registrable design?
"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 its ornamentation (s. 1(2) RDA):
- The design can be of the product itself (or part of the product) or its ornamentation.
- The design need not have aesthetic quality.
- External or internal features of appearance are generally protected.
"Product" means any industrial or handicraft item other than a computer program and includes packaging, get-up, graphic symbols, typographical typefaces and parts intended to be assembled into a complex product.
A "complex product" is composed of at least two replaceable component parts permitting disassembly and reassembly of the product (s. 1(3) RDA).
- The design need not be industrially exploited but can reside in one-off works.
- 2D and 3D designs are included.
- The design of spare parts is registrable provided the other criteria for registrability are met.
- Computer programs are excluded
Infringement of a registered design
A registered design is infringed by any use without the consent of the proprietor of (s. 7 RDA):
- The design.
- Any design which does not produce on the informed user a different overall impression, taking into account the freedom of the author in creating that design. The informed user has experience of similar designs and is reasonably discriminating (Procter & Gamble v. Reckitt Benckiser (2007).
Infringing uses of the above include:
- The making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied.
- Stocking such a product for those purposes.
Infringement of a registered design is actionable by the proprietor but not a licensee. A defendant may bring proceedings for groundless threats of infringement proceedings (s. 26 RDA).