Designs: the basics

Last updated: May 2007

What is a design?

A registered design is a monopoly right for the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture, materials, of the product or its ornamentation. Examples of designs include floral or other decorative patterns, graphic symbols, including computer icons, the shape of products and their packaging.

Designs can also, subject to the nationality of the owner of the design, benefit from unregistered design rights. UK design rights apply to original, non-commonplace designs of the shape or configuration of products. Design right is not a monopoly right. A design right protects the design from copying.

How are designs protected?

In the United Kingdom, designs are protected in two main ways.

Certain designs may benefit from unregistered design right protection. Two forms of unregistered design right exist covering the UK. The first covers the UK only, the second is the so-called Community unregistered design right, covering the whole of the European Union (EU).

The two forms of design right co-exist, although are not identical. In essence, UK design rights protect original, non-commonplace designs of the shape or configuration of products. Community design rights protect the appearance of the whole or part of a product resulting from the lines, contours, colours, shape, texture and/or materials of the product or its ornamentation.

Design right is not achieved via registration; it is an unregistered right similar to copyright. It arises on the creation of the work in the UK, and with Community design rights when the design is made available to the public. Design right protects the design from being copied. Design right protection is only available to nationals of certain countries.

Designs are also protected via the statutory protection of registering the design. Designs can be registered as a United Kingdom Design Registration by application to the UK Designs Registry.

Designs can also be registered in foreign countries and across the whole of the EU via a so-called 'Community Design'. A registered design in the UK is infringed by the deliberate or innocent sale or commercial use of an article which gives an informed user the same overall impression. A design application must be filed, in the UK or through the Community Design System, within 12 months of the first sale of a product to the design.

Designs may also be subject to copyright and registered trade mark protection.

Why should I register a design?

The problem with relying on the unregistered design right protection in the United Kingdom is that you have to first prove that your design has been copied, in a similar way to establishing copyright infringement. You do not have to prove that a registered design has been copied to establish infringement.

Design registration can also be a very good complimentary form of protection to registered trade mark protection.

Further, unregistered design right protection is often limited or non-existent outside the UK and thus it is crucial to register your design in countries where design right protection is not available.

Must I register a design?

No, but for the reasons given above you should register your design. You do not have to register a design to use it. Design Registrations are designed to stop others using the design and are not a pre-requisite for your use.

How long do unregistered design right and design registrations last?

Unregistered design right and design registrations are not perpetual rights, in contrast to trade mark registrations, which can be renewed indefinitely.

UK unregistered design right has a duration of 10 years from the end of the year of first sale of the article, subject to an overall maximum of 15 years from the end of the year in which the article was designed (if no articles are sold within five years). In the last five years of protection any party is entitled to a Licence to make the design. The terms of such a Licence are settled by the UK Intellectual Property Office if not agreed between the parties.

Community unregistered design right lasts for three years from the date on which the design is first made available to the public in the EU. A United Kingdom or Community Design Registration may last for up to 25 years, but has to be renewed every five years.

How do I register a design?

A design is registered by filing a design application at the Designs Office of the country or countries where you wish to trade. Design applications can be registered relatively quickly in the United Kingdom and through the Community Design system. It takes around three months to register a typical UK or Community Design application.

To qualify for registration in the UK and through the Community Design Registration system, a design must be new, which means that it must not be the same as any design which has already been made available to the public. It must also have individual character which means that the overall impression it produces on an informed user of the design must differ from the overall impression produced on such a user by any design which has already been made available to the public.

How much does a design application cost?

The cost of registering designs varies from country to country. A design registration does tend to be much cheaper than other forms of intellectual property protection such as patent protection.

Our services

Pinsent Masons has a dedicated Trade Marks & Designs Team which consists of qualified Design Attorneys. We can file and prosecute design applications across the globe.