Registered Design FAQ’s

WHAT CAN BE A REGISTERED DESIGN? 

A registered design can be the particular look, shape, configuration or ornamentation of a product(s).

DO I NEED TO REGISTERED DESIGN? 

This depends on if you have something unique that you would like to protect. A registered design may become essential to your business in the future and save a lot of headaches down the road. If you are unsure regarding anything to do with registered designs our expert team with over 30 years’ brand protection experience are on hand to advise. Call us on 0800 069 9090 or drop us an email to mitch@start.biz to find out more.

ARE ALL REGISTERED DESIGNS REGISTERABLE? 

No, a registered design will not be accepted if it is not distinctive enough. We will advise in our report ways in which you can make your design more distinctive and help you with your application.

IS A REGISTERED DESIGN EFFECTIVE WORLDWIDE? 

No, a registered design is only effective in the country where the design is registered. However, there are several International Conventions that exist which assists clients who wish to register a design in more than one country with one single application which are more cost effective than obtaining separate national registrations.

HOW IMPORTANT ARE REGISTERED DESIGN CLEARANCE SEARCHES? 

Registered design novelty searches are particularly important as they are the first step to determining whether the design you wish to use, and register is available to do so. We strongly recommend that, to avoid any potential conflict between your proposed design and any existing confusingly similar designs, that you instruct us to carry out a comprehensive registered design search on your behalf.

CAN I AMEND MY REGISTERED DESIGN AFTER SUBMISSION? 

No, once an application has been submitted it cannot be altered except for the owner’s name and address. It is important your application is as accurate as possible.

HOW LONG DOES IT TAKE TO OBTAIN A DESIGN REGISTERED IN THE UK? 

The initial registration process takes around 2-3 months to complete.

HOW LONG DOES A DESIGN REGISTRATION LAST? 

A registered design is renewable every 5 years for a maximum registration period of 25 years.

HOW MUCH DOES A REGISTERED DESIGN COST? 

The application fee is dependent on the number of designs included in one application. For example, it is possible to file a multi-design application in the United Kingdom. A UK design application containing one design costs £300; a UK multi-design application containing up to 10 designs costs £550 and UK multi-design application containing up to 20 designs costs £750.

What is Registered Design?

All aspects of Intellectual Property are extremely important to the value, investment and reputation of a business, none more so than Registered Design protection. A Registered Design protects the appearance, physical shape, configuration and the decoration of products whereas trade mark registration protects the names of your products or brands.

Benefits of Registered Design 

A Registered Design gives you the right to prevent others from using it, it is an exclusive right and therefore the best form of protecting a design.
A Registered Design makes taking legal action against infringement and copying more straightforward which is more likely to result in a more cost effective and successful litigation action.
Once registered you can display your registration number of your design which will also act as a deterrent to potential copiers.

Criteria 

A design qualifies for registration if:
It is new. A design must be ‘new’ at the time of filing. Subsequently, if the design has been disclosed or made public (other than by the designer, see below exception) prior to filing or if the design is not materially different to another design that has already been made public then the validity of the Registered Design can be attacked which, if successful, would result in the cancellation of the Registered Design.
One important exception to the above is that if the prior disclosures of a design is made by its designer, or in consequence of a disclosure made by the designer, within 12 months before the filing date (or priority date, if applicable) of the application then this cannot render the Registered Design invalid by a third party. If the designer made the design public more than 12 months after the filing of the application then the Registered Design can be declared invalid.
However, such disclosures may prevent registering the design in foreign countries, especially outside the European Union, as many countries in the world do not allow such a grace period, or allow a shorter period.
The above provisions do not exclude disclosures made independently of the designer during this period, and therefore applications should be filed before the design is disclosed if possible.
However, even a design that meets the above criteria can be refused registration for the following reasons:
• It is offensive (for example feature graphic images or words)
• It is not your own intellectual property
• It makes use of protected emblems or flags (for example the Olympic rings or the Royal Crown)
• A design registration cannot protect features of a design which are solely dictated by the product’s technical function

Duration 

A Registered Design gives you the right to prevent others from using it for up to 25 years – you have to renew the Registered Design every 5 years.

Application process 

We specialise in all aspects of design registration from conducting initial searches on the Designs Register to assessing any potential infringement issues and novelty issues against earlier Registered Designs through to the registration of the design. We can also represent you and offer advice in relation to any invalidity claims filed against your Registered Design as well as conducting frequent ‘watching’ searches on the Designs Register so that we can file for invalidity of any design that is not materially different to your Registered Design.

Filing a design application 

We will require certain documents and information to enable us to prepare and file an application, we need drawings or photographs showing all features of the design.
We also need to know:
The full name, address and nationality of the applicant (which may be an individual or company); and
A description or general name of the article to which the design is to be applied (if this is not obvious);
Full details of any application from which you wish to claim priority.
We can also include a brief explanation of the design in the application, but this is not compulsory. If priority is claimed, then it is necessary to submit a certified copy of the priority application within three months of filing.

Deferment of registration 

A UK Registered Design is usually registered and published once it has passed the registration process. However, the registration and publication can be deferred for up to 12 months from the filing of the application.
This is achieved by not consenting to the publication of the design in filing, and then filing a subsequent consent at some point before 12 months from the filing date.
There is an additional fee for deferring the publication and subsequently the registration of the design.
There are often situations where immediate publication of the content of the design registration may not be desirable, such as when corresponding patent protection is being pursued in respect of the content, or where the content relates to an upcoming product that has yet to be formally publicly announced. A UK design application can be deferred for a maximum of 12 months.

Multi-Design applications 

It is possible to file applications covering more than one design, with no restriction on the designs which are grouped together. The advantage of filing such multiple applications is a reduced cost compared to single applications.
Each of the designs in the multiple application is a separate piece of property and therefore can be licensed and assigned separately.
At renewal, not all the designs have to be renewed. It is possible to claim different priorities for each design and to defer the registration and publication of only some of the designs.

Invalidity 

As explained above, an application for invalidity may be filed once the design is registered. An invalidity action may be filed on the basis of a lack of novelty, individual character, or that the proprietor is not entitled to the design. Additionally, the holder of an earlier trade mark or copyright may file a request for invalidity based on their earlier rights.

Registration abroad 

The filing of a United Kingdom design application generates a “priority date” which can be claimed to support corresponding design applications filed abroad within six months of the UK filing date.
It is also possible for a UK registered design application to claim priority from an overseas filing.
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