What Every CEO Needs to Know About Design Rights

Equally, creating a brand and making sure you’re not encroaching on other people’s ideas and designs can be a minefield for any new business or established organisation looking to rebrand or release new products.

Here Elizabeth Ward, Principal of Virtuoso Legal advises brand owners about how to protect themselves from the threat of litigation in relation to design rights.

Creating the right design with an attractive “look” is very important in today’s style-conscious economy. A great looking design can add real value to a product. Registered design rights were created so that businesses could protect the “eye appeal” and distinctiveness of products. The design of a product can be protected as an unregistered design – although these only last a relatively short period of time or after registration at the Patent Office as a registered design. The Registration confers a longevity of design right that makes it an especially valuable asset.

In order to protect how a product looks (as opposed to how it works), it is important to register the design. A registered design will protect the lines, contours, shape, and texture of a product or its ornamentation, although it is important to have this done professionally as the owners of Trunki found out when their own filed design failed to protect their unique design.

Registered designs are useful in businesses that manufacture products with visual impact. These include high value cars, toys or furniture. If your product looks good, a registered design will help protect you if your product design is copied by a look-alike. It is for these reasons that certain goods such as glasses, sunglasses and even picture frames use the registration system to maintain uniqueness in their market.

In order to be validly registered, the design must be new and have individual character such that it would not remind an informed person of an existing design. In other words, it needs to be new and different.

A registered design has protection throughout the UK for five years and it can then be renewed every five years for up to 25 years. In order to protect the design in other countries there are two options. Firstly, it is possible to apply for a Registered Community Design with the Office for Harmonisation in the Internal Market (OHIM). Once registered, the design then has protection in all countries of the EU. Alternatively, you can apply for registration of the design in the individual countries in which you want protection.

Even if you have not registered a design, the design of your product may still be protected as an unregistered design right. However, these rights are short-lived (some are only three years in duration) and can be difficult to enforce.

The advantage of an unregistered design right over a registered design right is that it is free and is created automatically when you create an original design. However, the two-dimensional aspects (for example patterns) of the design are not protected and these would need to be registered.

There is also a Community unregistered design right which, like UK and Community registered design rights, protects new designs which have individual character. Its protection lasts for three years from disclosure of a product incorporating the design to the public in the EU.

Specialist IP lawyers can offer help and advice for the protection, management, enforcement and commercialisation of your registered and unregistered design rights.

Protecting your design

If you want your new design to have a shelf life beyond just a few months, you need to consider the following:

• Creating the correct design rights strategy – from understanding whether your designs should be registered and in what countries such registration needs to be made, i.e. UK, European or International registration.
• Understanding the requisite design right applications and dealing with any oppositions or issues which may arise during the application process.
• Knowing whether your design could and should be registered as a trademark and undertaking the required trade mark application. Design rights registered as trademarks are notoriously difficult to acquire and always need to be done by professionals.

Management of your design right portfolio

A legal specialist will manage your design right portfolio, dealing with renewal of registrations, policing your design right registrations and licensing of designs to third parties. They can also help with advice in relation to third-party applications or registrations if they potentially infringe your design rights.

Enforcement and defence of your design right

Sometimes it is necessary to protect your position and your design rights. Specialist IP lawyers can provide practical, commercial advice in relation to design right disputes, including taking Court action if required. These kind of unregistered and registered designs actions are called infringement proceedings.

In the unfortunate event that you are threatened with infringement proceedings, lawyers can act on your behalf in defending any court action taken for design right infringement.

Virtuoso Legal will always look to find commercial solutions through alternative dispute resolution, mediation and negotiating damages and costs on your behalf, before court action.

Commercialisation

You might need help on the monetization of your design rights. This could be licensing and a range of other commercial agreements which include the rights to use your designs as part of a joint agreement, collaboration, distribution agreement or manufacturing agreements.

One of the most common questions is about royalty rates and calculating fees due on royalties. Up to date, sound commercial advice to ensure that the exploitation of your design rights yield the highest possible returns for you is essential and at all times you need to ensure that your designs remain fully protected.