Why businesses should register their design rights

Posted: 05/04/2023

Registered designs are often overlooked by businesses assessing how best to protect their intellectual property (IP). This is in part due to the complex and multi-layered legal framework for design right protection in the UK, but it also results from an underestimation of the role such rights can play in a business’s portfolio. Design rights are commonly used in the fashion and retail sectors to great effect, but can provide effective and affordable protection to businesses in all industries.

This article provides a brief overview of: (i) the nature of registered design rights and what they can protect; (ii) the value of design rights; and (iii) the advantages of a business formally registering its design rights.

What are registered design rights?

Registered design rights protect the physical appearance of the whole or part of a product, rather than its technical function(s), which can be protected by alternative means, such as patents. The following table summarises some of the key features of UK and ‘Community’ registered designs:

Feature	UK registered designs (UKRD)	Community registered designs (RCD)
Scope of protection	The appearance of the whole or part of a product (in particular lines, contours, colours, shape, texture, materials or its ornamentation).	The scope of protection is very similar to the UKRD, albeit the territory covers the European Union.
When does it arise?	On registration with the UK Intellectual Property Office (UKIPO).	On registration with the EU Intellectual Property Office (EUIPO).
Requirements for protection	(i) An ‘original’ design - one that is all the designer’s own work, and not identical to any design made available to the public worldwide; (ii) with ‘individual character’ – giving the ‘informed user’ an overall impression which differs from prior designs; and (iii) application must be filed within the 12 month period following the product first being made available to the public.	Very similar to UKRD: (i) ‘Novelty’ – if no identical design has been made available to the public; (ii) possessing ‘individual character’; and (iii) application must be filed within 12 months of the design first being made available to the public.
Term of protection	25 years (subject to valid renewal at five-year intervals).	Same as for UKRD.
Infringement	Monopoly right, protecting against third party reproduction (knowingly or unknowingly).	Same as for UKRD.
Remedies	(i) Damages/account of profits (ii) Injunction against future infringement (iii) Delivery up/destruction of all infringing articles	Same as for UKRD.

The value of design rights

Design rights can offer both a useful, extra layer of protection co-existing with other forms of intellectual property, and/or protection for unique elements not covered by other IP rights.

The hidden advantages of design rights include the following, by way of example:

Low costs – useful for businesses with wide product ranges.
Fast registration – important for manufacturers operating in dynamic sectors.
New products – patents or copyright may cover the underlying technical aspects of a new product, but the overall appearance of a design can be just as important to protect.
Speed of infringement remedies – injunctions are a potential remedy, and can be key to stopping products being made available in key markets before the damage is done.
Brand protection – where a trade mark includes a stylistic element it can also be registered as a design, with significant benefits (you are not tied to any specific class of goods, continuous usage is not necessary to keep the design valid, and you can register many variants – relatively inexpensively – to make protection as broad as possible).
Future proofing – where a novel design shape may not presently qualify for trade mark protection, it can initially be registered as a design until sufficient distinctiveness/reputation has been established for registered trade mark protection.

Why register your designs?

Whilst limited protection of designs arises automatically through unregistered design rights, there are numerous important reasons why a business should consider formally protecting its designs through registration:

A greater deterrent – the presence of a design portfolio on the register may deter copycats, especially when combined with the lower requirements for demonstrating infringement.
Easier to show infringement – with registered designs there is no requirement to show deliberate infringement, whereas with unregistered designs you must provide proof of both creation and deliberate duplication.
Greater term of protection – a UK unregistered design lasts for up to 15 years and an EU unregistered design/UK supplementary unregistered design lasts for just three years, whereas registered designs can last for 25 years.
No ‘licences of right’ – during the last five years of protection of a UK unregistered design, the rights holder can be forced to license the design, reducing the damages/revenue available.
Easier to exploit – registered designs can be exploited in numerous ways, including licensing for revenue, sold or used as security for capital.

Registering and maintaining your portfolio

It is possible to register online for single or multiple designs, either at the UKIPO or the EUIPO (as applicable – see above for fees). On filing the application, the applicant must provide at least the following:

the rights holder’s/designer’s full name and address; and
illustrations of the design (up to seven) – these can be line drawings, CAD designs or photographs (in practice, line drawings showing the top, bottom, sides and an angled view, can provide the clearest and fullest depiction of the product and avoid ambiguity).

Postponing publication is also possible for both UKRDs and RCDs upon payment of an additional fee. This can preserve the confidentiality of a design whilst the product is brought to market.

It is essential to keep your portfolio of design rights up-to-date, complete renewals on time, and guard against copying. We have a team of experts well versed in registering, maintaining and exploiting design right portfolios, and taking action against suspected infringement. Please contact us if you wish to discuss your design right portfolio.

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