Registered Designs: The Unsung Heroes of IP

Trade marks, patents, and copyrights frequently grab the headlines, seen as the “big three” of the intellectual property rights world. However, there’s another valuable IP right that is starting to gain attention which can significantly strengthen your portfolio and strategy: Registered Designs. As WebTMS has just updated our Registered Design module, we thought it was a good time to take a look at these, often undervalued, IP rights.

What are Registered Designs?

The UK IPO succinctly explains what a Registered Design does:

“A design registration helps protect the appearance of a product, such as its shape or pattern.”

In the EU, they are called Registered Community Designs (RCD), and in the US they’re referred to as Design Patents (and are slightly different in that US design patents cannot be applied to some features, such as colour, that are registrable as design rights in the UK and EU).

In the UK, the process from application to achieving design registration can take just three weeks, assuming no examination reports, making it the fastest way to gain IP protection. The cost is reasonable. In the UK, fees start at £50 for one design and rise to £150 for up to 50 designs. In the EU the cost is €350 for the first design, €115 for designs 2-10 and €50 for each subsequent design. In the US, the filing fee is $200, with generous discounts for small and micro entities.

Although it depends on jurisdiction, usually you’ll need to renew your Registered Designs every five years, for a fee, and the maximum a design can be protected is 25 years.

What can be protected?

Almost anything can be protected providing there is a unique element or combination of elements that distinguish the design. Examples include:

• Greeting cards designs
• Car tyre tread patterns
• Fabric designs
• Textures
• Typographic typefaces used on products
• Bottle shapes and adornments
• Innovatively shaped food
• Folding kettles (yes really!)
  

…in fact there are more than 21 million registered designs searchable in the EU’s Design View database.

The design must be “new” – applied for within a year of its creation and different from any previously published designs.

Why are they important?

Registered Designs, either alone or in combination with other rights such as trade marks, can be invaluable should another entity attempt to market a product that uses the same design. To show infringement, the offending design doesn’t necessarily need to be identical, as long as the overall impression given is the same as the protected design.

In the UK, M&S relied on Registered Designs to secure a victory in its long-running intellectual property battle with ALDI, when the latter was accused of copying M&S’s festive gin bottle. The design features a built-in light, gold flakes suspended in the liqueur, a bell-shaped bottle, and graphics on a wintry theme.

The High Court’s Intellectual Property Enterprise Court (IPEC) ruled that ALDI’s Infusionist gin bottle – also featuring gold flakes, an integrated light, and a bell shape – created the same overall impression as that conveyed by the M&S design (one of more than 20 light-up gin bottle designs that M&S has registered). While ALDI appealed, the most recent bottle in its gin range is significantly different, and is likely to remain so as the appeal has just been reported as unsuccessful.

Registering designs is now a key pillar of M&S’s IP protection strategy, with multiple registrations for items such as “light up candles”, clothing and lingerie, and variations on its much-loved Colin the Caterpillar and Connie the Caterpillar ranges.

Lego – form beyond function

An interesting test of registered designs happened recently in the case of renowned toymaker Lego, which appealed an EUIPO decision to annul its protection. The EUIPO held that all the features of appearance of the Lego brick were solely dictated by its technical function, making it ineligible for protection on design grounds. However, the General Court of the CJEU ruled in Lego’s favour, finding that the bricks qualify as a design, despite some elements also having a functional aspect. A design can only be invalidated on the grounds of functionality if ALL its features are functional, found the Court.

The Court referred to Article 8(3) of the Community Design Regulation (CDR), sometimes called the “Lego exemption” which protects products involving “the multiple assembly or connection of mutually interchangeable products within a modular system”. The Global Legal Post has a full breakdown of the decision here.

Trade marks and registered designs – the dynamic duo of IP protection

Used in tandem, trade marks and registered designs can broaden and deepen IP protection. Trade marks work to protect a brand’s identity (words, slogans, sounds, etc), working as a badge of origin, whereas registered designs protect visual elements.

Trade marks are registered in classes for specific goods and services, while registered designs are not limited. So, for example, a pattern created and registered by a designer is protected, whatever product an unauthorised person uses it on. By contrast, normally only one trade mark can be applied for in one application (although series are occasionally possible under strict guidelines). Shape, position and colour marks are often very hard to seek registration for, as inherent distinctiveness must be shown, often in the interest of public policy, due to the monopoly that a trade mark can give (if continuously renewed).

Registered design applications can include multiple designs in a single application, making it more cost-effective. Their publication can also be delayed, so that commercially sensitive design innovations won’t be revealed prior to a product launch but will be protected from the point it is public. Trade marks, in contrast, are published for opposition for a period, which can alert competitors to new product announcements ahead of time (although some companies choose to file first in places like Jamaica, where to search the register you must visit in person to do so, so that they have the 6 month priority window to get their affairs in order ahead of release). The bar to registering designs is also relatively low in contrast to trade marks, with the main criteria being that the design must be novel and applied for within the correct timeframe.

New WebTMS features for Registered Design Rights portfolio management

WebTMS has just released some important enhancements that will help IP administrators manage design rights more dynamically. These include:

• Infinity Interface – The Registered Designs module now benefits from the same look and feel as the other Infinity modules, like Trade Marks.
• Browse between records – as part of the Infinity upgrade, records can now be browsed for efficient viewing and updating.
• Data Analytics Builder – conduct in-depth analysis of portfolio trends, such as top filed countries or yearly numbers, using this new tool to effortlessly create graphs and pivot tables.
• Map Coverage Reports – you can now visualise a portfolio by creating a map report, which can also be shared with clients or individuals without access to WebTMS.

For further information or a demonstration of the updated module, please contact your account manager or s[email protected].