Small businesses and designers should be aware that cheaper registration fees are an opportunity for them to secure greater protection for their intellectual property in future, as well as being a post-Brexit route to safeguard designs.
Alongside trade marketing, patenting and copyright a registered design is one of the options available to help protect designs.
A registered design protects the visual appearance of a product (including shape, texture, materials, colour and pattern) and gives the right to prevent others from using the design for up to 25 years through a renewal process every five years. The penalties for infringement can be severe indeed; it is a criminal offence to copy a registered design intentionally.
Designs are registered to the Intellectual Property Office who has recently reduced its fees for registering a design, from £60 for single application to £50, with bigger savings available for multiple applications. The savings are huge for multiple design registrations: as an example, a batch of 40 designs registered online will cost £130 under the new system, compared to £1620 under the old fee rates.
Fiona Gibbon of Endeavour Partnership Solicitors says: “The door is open for small businesses who are seeking to safeguard their business ideas and designs for less. It is now much more affordable for a small business to register different options for one design, such as line drawings, coloured drawings and photographs, which will strengthen their case in challenging any copycat competitor.”
Fiona added: “The need for a more comprehensive approach to registration of designs has been highlighted by the recent ruling by the Supreme Court, which saw the designer of popular children’s sit-on suitcase Trunki lose their infringement case against the cheap look-alike Kiddee case”.
The Trunki design was protected by only six computer-aided design drawing representations of the exterior of the case taken from various angles and perspectives. This relatively small number of drawings led the Supreme Court to rule that the lack of ornamentation on the surface of the Trunki as depicted in the registration differed from the decoration present on the body of the Kiddee case.
“The Trunki design had been registered under the EU Registered Community Design process, but the outcome of the case translates directly to the UK design registration process,” explains Fiona. “The lesson to be learnt for all businesses where registration and safeguarding of designs is an issue is to protect your designs with multiple depictions and types of image to give maximum protection.”
Giving some thought to registration requirements and Brexit it should be remembered that a UK registration only protects designs solely in the UK, so for businesses looking to protect designs in Europe the EU Trade Marks (EUTM) and Registered Community Designs (RCD) will continue to be valid in both the UK and the rest of the EU until Brexit is completed. Post Brexit, UK businesses will still be able to register a Community Design, which will cover all remaining EU Member States.
Further, the government has said it intends to ratify the The Hague System for the International Registration of Industrial Design in the UK, to enable continued access for UK designers post Brexit. This allows registration of up to 100 designs in over 65 territories through one single international application.
Fiona Gibbon concluded: “It is important in the run up to Brexit that businesses consider their options for both new and existing design registrations and establish early on whether they need to protect their design in either the UK or Europe, or in both.”
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