In this quick guide, we will provide a brief introduction to design rights. This will cover some basic points about design rights and considerations for international businesses.
Design rights are a unique type of intellectual property rights which protect designs. Designs can be 2D or 3D. There are two types of design rights, unregistered, and registered. Typically, they confer upon the rights holder a different scope and length of protection over a design.
Like copyright an unregistered design is a right that comes into existence at the point when a new design is created. This imparts a certain level of protection over a design at the point it is made. Registered design rights typically last longer and protect more aspects of a design.
This is a bit like trade marks however unlike trade marks, registered design rights are not examined at the point of submission. This means it is important to make sure that your registered design right application is correctly drafted to make sure that it protects the key attributes of your design.
Unregistered design rights protect the shape and configuration of a designed object. Registered designs also typically provide further protection such as surface decoration which would not be protected otherwise.
There are many priorities when it comes to protecting designs with design rights. The first step is to be aware that designs are protected by their own IPR, (note: that in many cases designs can also be protected though copyrights, and in some cases trade marks).
The second thing to do is to identify key designs that require protection. You should seek to file these as registered designs as this will give you the best protection and quickest course of remedy should someone infringe your design.
As mentioned above, whilst registered designs are a registered right, they are not examined upon filing. As such it is important to make sure that your design registration will protect your design in the best way possible. This may not be immediately obvious to non-experts. In many instances designers submit designs to the IPO in the form they have created them (e.g. a .CAD file). However, doing so often does not register the design in such a way that it emphasises its key attributes as to ensure that they are protected by the law.
As such, preparation of a registered design should be considered as an entirely different drafting exercise exclusive from the creation of the design itself.
There are a few considerations to make if you are seeking to protect designs internationally.
The first consideration would be to ascertain the extent to which your design is protected in its prior to any registrations in the countries in which you operate – including where the design is available and communicated to the public.
As such you will want to have a look at these jurisdictions and the general status of protection conferred by unregistered design rights in these markets, as well as any protection that may be in place via copyright or in limited cases, unregistered trade mark rights (“passing off”).
Once you have completed an intellectual property audit of your designs exposure and protection, you will need to review whether this is adequate and whether (and where!) design registrations can plug any gaps in your protection. Key to this will be to look at where infringement might occur, the a priori rights from unregistered designs, the strengthened rights offered by registration and any further ways that you might look to enforce the uniqueness of your design.
A laptop case manufacturer has developed a new innovative design comprising of a hard case with unique ornamentation on the outside and structural elements on the inside that offer new and unique features. Designed in the UK, the laptop case is being prepared for release in Europe and the United states in the coming months. The manufacturer is very wary of cheap copies coming into the market once the product becomes well known – that will both emulate the unique ornamentation and look of the case, as well as the structural features.
In the UK, the design is protected by both unregistered and registered design rights, which means that the ornamentation and structural elements are protected to an extent.
From customer research it seems that it is this recognisable ornamentation that drives sales. As such, looking at the EU, it will be important to attain registered design status there, and also in the US to protect they key element of the design that appeals to customers, and be able to effectively enforce the design.
Virtuoso Legal are an intellectual property specialist law firm, established in 2007 and based in London and Leeds. Virtuoso Legal have dedicated experts who are able to assist across the spectrum of intellectual property, from registering, commercialising and enforcing IPRs.
If you have any questions do not hesitate to get in touch with OBD or Virtuoso Legal, we would be happy to assist.
www.virtuosolegal.com 0113 237 9900
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