As per our World Intellectual Property Organisation (WIPO) a design is “the ornamental or aesthetic aspect of an article”. It “may consist of three dimensional features, such as the shape of an article, or two dimensional features, such as patterns, lines and colours”. They can apply to any type of product from jewellery, to textiles to logos.

To meet the criteria for design protection a design must be two things: new and original. The first refers to the design being absent from the public domain or if it has already been exposed to the public eye, that cannot be for longer than 12 months. The second, ‘originality’ part, refers to individual character, or what is known as novelty in the design. In other words, it should bring something new to the existing market.

A design, however, will not protect the functionality of the article, but only its “ornamental or aesthetic” features. Functionality is a concern for patents.

UK and EU systems protect both, registered and unregistered designs. Once registered a design is protected for a maximum of 25 years, given it is renewed every 5 years. Registration itself is straightforward and rarely opposed, it is enforcement however that establishes protection.

Unregistered design rights on the other hand are automatic and can be enforced once under threat. Their instant protection in the UK lasts 15 years from creation, while in the EU unregistered design protection lasts 3 years from the time the design is released to the public.

It is important to note that two dimensional designs, like graphics and logos, do not find protection under unregistered designs in the UK, but do in the EU. This is a quirk that the UK preserves despite its current membership in the EU. Unregistered designs, however, have the advantage of covering areas of innovation that go with the season, such as fashion. Fashion designs are in and they are out, with something so dynamic, undergoing the design registration process repeatedly, will be too costly and time consuming to sustain. Unregistered design rights therefore provide protection only when it is needed and for items that are not intended to stand the test of time.
Why register a design?

Despite the perks of unregistered design protection, registration has certain benefits. The most notable one is longer protection of up to 25 years. Its more lasting effect comes with wider scope of protection over, for example, instances of innocent infringement. In practical terms, a certificate of registration is a much easier proof of ownership in a design right enforcement action. When unregistered, designs rely on evidence in the form of design process, marketing material and sale numbers, which can be difficult to gather if a record has not been kept from as early as the conceptualisation stage.

Disclosure

To be registered a design cannot be in the public domain for more than 12 months. Otherwise its registration will be deemed invalid.

Registration can also act as an ownership assurance over a design before it is ready for publication. Launching a new product often needs a ‘hush-hush’ approach, which calls for an equally discreet design registration process. In the UK, an applicant can request to defer the publication of her or his design for up to 12 months after it has been registered. Notably, an EU application, on the other hand, allows for up to 30 months deferment (with a minimum of 3 months notice before the period expires).

 When a design registration is intended to expand from one territory to another, the new application can use the priority (filing) date of the first design registration, so long as it is filed within 6 months of the first registration.

 Application Practicalities

 One application can accommodate for multiple designs, up to 50 in the UK and up to 100 in the EU, and still result in separate registrations. Once registered a design is given a class (for the type of goods) under what is known as the International Locarno Classification. However, all designs in a multiple design application must fall within the same class, except when it comes to “graphic symbols and logos, surface patterns and ornamentation”.

Within the application a description is optional and only asks for the aesthetic rather than functional features of the design. It can also contain a disclaimer, which would list the features the applicant does not wish to protect as part of the design. This may sound counteractive but in actuality it can broaden the protection granted. For example, by excluding its texture, the design can be protected against identical designs of all textures.

Once registered, if an owner or representative misses the 5 year renewal date, the registration is granted 6 months grace period for a late renewal. Once the grace period expires, the registration will be removed from the register, but can be restored in the subsequent 6 months. That is the practice in the UK. The EU legislates with the same restoration period but differs with a 2 – month grace period for late renewals.
Effectiveness
Design rights, although optimistically promising in their protection, can be a largely grey area with all around blurred boundaries. That, some would say, they owe to their vague criteria. Nevertheless, their strength and necessity often appear to be judged on individual circumstances. Yet for most they are not to be underestimated for their effectiveness when combined with other forms of protection. Furthermore, with continuous product design and technology developments, design rights are becoming an increasingly popular route for protection. Having said that, their development is one to look out for.