Safeguarding innovation with registered designs
In today’s competitive marketplace, how can you ensure others can’t copy your products? This is where registered designs can be important.
Both Aldi and Puma have recently been in the intellectual property news following decisions concerning registering designs.
In Puma v EUIPO and another (Case T-647/22) EU:T:2024:14 (6 March 2024), Puma appealed against a recent decision by the EU Intellectual Property Office (EUIPO) that a registered Community design for sports shoes was invalid. However, photographs of Rihanna in shoes with the same features had appeared on Instagram about 18 months before Puma’s application for registration, and so the General Court upheld the EUIPO’s decision on the basis that the Instagram images showed disclosure of a prior design which could have been known to the sector.
In Marks & Spencer plc v Aldi Stores Ltd [2024] EWCA Civ 178 (27 February 2024) the Court of Appeal held that Aldi’s decorated gin bottles produced the same overall impression on the informed user as M&S’s already registered design.
What is a ‘design’ and what is a ‘registered design’?
A design is the visual appearance of a product, or part of a product. The appearance of a product can comprise features such as the lines, contours, shape, textures or materials of the product.
A registered design in the UK is a design which has been successfully registered with the UK Intellectual Property Office (UK IPO). A design owner can also apply for a Community registered design for protection in the EU.
To qualify for protection by registration with the IPO:
- The design must be novel. This means it must be new and not have previously been made available to the public anywhere in the world. This is where the concept of prior ‘disclosure’ comes in, which was relevant to the Puma case above.
- The design must have an individual character. This means that the product must give a person who is familiar with the product in the field (known as an “informed user”) a different overall impression from earlier designs.
- Some specific exclusions derived from statutes must not apply. This means that a design will not be protected by registration if specific exclusions apply. These exclusions come from UK and EU case law, for example a computer program or a design contrary to public policy or accepted principles of morality.
Protection lasts for a maximum of 25 years from the date of registration. During this period registrations must be renewed every five years to maintain the registration.
Registering your design with the UK IPO
The design registration process is relatively straightforward and low-cost:
- Stage 1. It is important to conduct a search of the UK IPO register to check whether anyone else has registered your design.
- Stage 2. Filing an application with the UK IPO is the next stage in the design registration process. This involves submitting illustrations and detailed descriptions of the design and paying the application fees. Registering a design costs from £50 for one design to £150 for up to 50 designs.
- Stage 3. The UK IPO will examine the application in full. This is to ensure the design meets the registration criteria described above. If there are any problems the UK IPO will let you now. You would then have a minimum of 2 months to resolve any issues. If there are no issues or you are able to resolve the issues pointed out by the UK IPO, your design will be registered.
Unlike for the registration of trade marks, there is no opposition procedure nor the need for the application to be advertised.
The UK IPO will publish the design in the journal of registered designs and send a certificate of confirmation.
Benefits of registering your design
Registering your design with the UK IPO carries benefits for a business and the creation of a product, especially where such a design of a product is crucial for commercial use.
- Stronger protection. A registered design gives a clear legal right to the owner for 25 years to take legal action against anyone copying it without permission. For example, you ask the courts for an injunction to stop someone copying your design as well as compensation for any financial losses you have suffered.
- Clarity and certainty. Registering your design provides clear evidence of your ownership and this should help if you come to negotiate the licence or sale of the design, or if you sell your business.
- Competitive and reputational advantage. A registered design should deter others from copying the design because of the risk of an infringement claim and could therefore give you a valuable edge in the market in which you are operating. It also helps to build up the goodwill relating to the product, especially if you have also built up a brand around it (including a registered trade mark).
We can help you make applications to register your designs and trade marks. If you are interested in doing this or have any questions arising from this article, please contact Katrina Banks at [email protected]
