Protect the Appearance of a Product
In the UK there are a variety of ways to protect your innovations using different forms of intellectual property rights. Where Patents can be used to protect the technical aspects of a product and Trade Marks can be used to protect your brand – Designs can be used to protect the appearance of your product. There are currently four different types of Designs protections available in the UK. Below is a brief summary of these different types of protection.
UK Registered Designs
A UK Registered Design protects the appearance of a product that includes, the shape and configuration of an article as well as pattern and ornament and any surface decoration on an article.
Once granted, a UK Registered Design lasts for a maximum of 25 years and is renewable every 5 years.
Since the UK left the European Union, a Community Registered Design will no longer protect your product in the UK. Instead, it is now necessary to apply separately for a UK Registered Design.
Once filed, the UK IPO only examines an application for Registered Designs for formal requirements s and does not perform substantive examination to ensure the designs meets the basic requirements of novelty or individual character. This means that usually, it is relatively quick and easy to obtain a UK Registered Design. In addition, anyone can apply for a UK Registered Design.
Similar to Patents and Trade Marks, UK Registered Design applications are also entitled to claim priority from an earlier foreign Design application for the same Design. The later application will then benefit from the same first date of protection as the earlier foreign application. In addition, a UK Registered Design application will also provide basis for a priority claim for a later filed foreign application for the same Design. For Registered Designs, the priority period is 6 months.
Unlike Patents, Registered Designs applications can benefit from a 12-month grace period, during which the Design may be publicly shown. If the application for Registration is filed within the 12-month grace period, then the public showing of the Design does not destroy the novelty of the Design and the Registration can still be validly filed.
UK Unregistered Designs
Similar to a UK Registered Design, an Unregistered Design protects the appearance of a product. However, an Unregistered Design does not provide protection for any pattern or ornamentation or surface decoration of that product.
As the name suggests, there is no application or registration process for Unregistered Designs. Instead, a UK Unregistered Design automatically comes into existence when a design is recorded in a design document, or an article is made to the design. However, the benefit of UK Unregistered Designs protection is limited by specific qualification requirements; qualification being limited to a qualifying person being a resident of the UK*, a business formed under the laws of the UK*, or to a product first marketed in the UK* by a qualifying person or business. In addition, a UK Unregistered Design must be original.
Unregistered Design protection lasts for between 10 to 15 years from the date of creation of the design, depending on the specifics of each case. To infringe an Unregistered Design, copying must be proven. Therefore, Unregistered Design protection generally offers a more limited type of protection than Registered Designs.
Continuing Unregistered Designs (CUD)
CUDs came into effect automatically on 1 January 2021 when the UK left the EU and, as a result, the Community Designs system. CUDs provide equivalent protection in the UK for Community Unregistered Designs which were already in existence before Brexit, and which previously provided Community Unregistered Designs protection in the UK. A Community Unregistered Design lasts for three years from the date the design was first made available to the public anywhere within the Community, therefore, the equivalent CUD lasts for the remainder of the three year term. Any Community Unregistered Designs which came into existence after 1 January 2021, do not have an equivalent CUD.
Similar to Registered Designs, CUDs protect the appearance of a product including any surface decoration, and are required to be novel and have individual character.
Supplementary Unregistered Designs (SUD)
SUDs provide similar protection to CUDs and are the new “equivalent” right to the Community Unregistered Design. However, unlike a CUD which could have been made available to the public anywhere within the Community, in order to come into existence, a SUD must first be made available to the public in the UK after 1 January 2021 to come into existence. A SUD is required to be novel, therefore, if a design is first made available to the public outside the UK after 1 January 2021, then SUD will not exist. If a design is first made available to the public in the UK after 1 January 2021, SUD protection does exist and Community Unregistered Design protection would not be available for that design.
Similar to Registered Designs, SUDs protect the appearance of a product including any surface decoration and are required to be novel and have individual character.
The above is a high-level summary of the different Design protections available in the UK and should not be taken as legal advice. If you would like to find out more about the different types of Design protections available in the UK and how this may benefit your innovations, please contact Anna Bartholomew annab@mathisen.co.uk.
(*UK or a qualifying country)