Small to medium enterprises (SMEs) invest significant amounts of time and money in developing the appearance of their products. However, many are unaware of how to protect this “added value".
The best option is to apply for a registered design which can be kept in force up to 25 years. Design registrations may be used to protect the shape or ornamentation of many products, including logos. A UK specific application may be submitted, or an EU wide registration sought, via a single application providing an attractive option for SMEs. To be validly registered, the design must be different to designs previously publicly known, and provide a different overall impression. However, a design registration can still be validly filed within 12 months of first disclosing the design.
Design applications in the UK/EU are not examined for validity and normally proceed to grant in a few months once suitable images of the design are submitted, providing a cost effective way to obtain a deterrent against copying. Corresponding foreign design registrations can be obtained.
Unregistered design right may arise automatically in new designs in the UK and Europe protecting against direct copying. Unregistered rights are of limited scope and duration, and are not available for all designs or designers. Careful records of designs together with designer and date details should be kept maximise ability to assert unregistered rights, but registration is the better option.
Design registrations only protect the appearance of a product, and not the way it works. They may complement patent protection or provide some protection where patent protection is not available, but should not be considered a substitute for patent protection. Professional advice should be sought before new products are disclosed to ensure that all possible forms of IP protection are explored, and if design registrations are made, to ensure the broadest scope of protection is obtained.
Katherine Mabey, Associate
First published in South East Business Magazine, January 2010