Designs are a form of intellectual property (such as copyright, patents and trademarks). One way of legally protecting the intellectual property of your designs is by registration. The reasons for registering a design include:

1) A registered design confers a 25-year monopoly right in the design. Registration gives the exclusive right to make articles incorporating the design, allowing the owner to sue for  intellectual property infringement even where the defendant did not copy the design. If a registration is not obtained, the owner of the design would need to depend on:

-(unregistered) design right, which only lasts for ten years from the end of the year of first exploitation; or

-where applicable, copyright (for example, where an artistic work is involved).

In the case both of design right and copyright, the owner would need to prove that the defendant had copied the design in order to succeed in an infringement action.

2) The process of obtaining a registered design is relatively short and inexpensive when compared, for example, with obtaining a patent.

3) Registration indicates that the owner has incurred time and expense in protecting his design, which serves as a warning to third parties that the design is valued.

4) From a practical commercial point of view, the fact of having a registration may help build up the reputation and goodwill relating to the product concerned, particularly when used in conjunction with a strong trademark.

A protected design can be of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation. This can include packaging, get-up, graphic symbols and typographic typefaces. So a three-dimensional design, such as an article, can be protected as well as a two-dimensional design, such as a surface pattern, character images, logos or software icons.

Parts of a product are protectable, provided they can be viewed by the end user when in normal use, are parts which are replaceable and intended to be assembled and disassembled, and are in themselves new and have individual character.

The design must be new. An identical design (or a design differing in immaterial details only) must not have been disclosed to the public anywhere in the world prior to the relevant date (which will usually be the date of application for registration).

In practice, an examiner would only raise an objection based on lack of novelty if he was aware of a prior publication of the same design, and had some documentary evidence on which to base the objection.

The design must have individual character. This means that it must give a different overall impression from earlier designs to the "informed user", who may not be a design expert but is a person who is familiar with the products in the field. This test is wider and more complicated than the novelty test, which focuses only on whether or not a design has been published before.

Features of a product that are dictated by its function will be disregarded in assessing whether a product has individual character. Specifically, "must-fit" items are excluded from protection, although the shape of a connection may be protectable in its own right.

A designer who discloses his design has a 12-month period in which to apply for registration of the design. This grace period (a concept well known abroad) gives the designer time to exhibit and market his design before deciding whether it is sufficiently commercial to justify the expense of registration, or to raise funding on the back of a demonstrably successful product. However, if during the 12-month period a third party makes a same or a similar unconnected disclosure before the designer has applied for registration of his design, the designer's application may be refused. This risk may be avoided by making an application for registration as soon as possible after disclosure of the design.

A design will not be registrable if specific exclusions apply.

The most important of these are: computer programs; features of a product which are dictated by their technical function or which are necessary in order for the product or a product which is placed next to it to perform its function - the so-called "must fit" exemption. However a modular system of mutually interchangeable products, such as modular furniture or LEGO bricks, can be registered. "Must-match" products can also be registered; designs contrary to public policy or accepted principles of morality.

The meaning of these principles was not harmonised by the Designs Directive, so English law criteria apply; royal arms, or, without consent, a representation of the Royal Family, national flags, if the use would be misleading or grossly offensive; coats of arms, national flags, official signs or hallmarks, or controlled symbols such as the Olympic Symbol, without consent.

 All articles are for general purposes and guidance only and do not constitute legal or professional advice.

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