How to protect the appearance of your new product with a registered design

02/08/11

Matthew Allen, European Patent Attorney, European Design and Trademark Attorney from AllenIP outlines how to protect the appearance of your product with a registered design.

Whilst a patent is intended to prevent competitors from reproducing a functional, technical, feature of a product, a registered design is intended to prevent competitors from reproducing the visual appearance of a product. Hence, a registered design is particularly suitable for a consumer product which is often designed to appeal to the eye of a customer.

What design to register?

The shape, lines, colours, texture, materials, and some other types of features of a design, can be registered, although there are some exceptions. The design of a part of a product can also be registered. The originality requirement for registration is that the design feature(s) must be new and have ‘individual character’ (meaning the design must give a different overall impression to known designs).

The scope of protection of a registered design is largely defined by representation(s) of the design, normally drawings or photographs. Therefore, it is important to file representation(s) of the design that provide the desired protection.

You may design a product with more than one feature which has individual character. Nick Lobnitz’s Paper Bicycle design included a new chain guard feature and a new head tube/top tube junction. If only the design of the entire bicycle was registered, a competitor who copies the chain guard but changes the remainder of the bicycle may have avoided infringement of the registered design, because the competitor's bicycle might not have created the same overall impression as the bicycle in the registered design.

However, Nick took professional advice to register the design of each part having individual character, i.e. a registered design covering only the chain guard part, and a registered design covering only the head tube/top tube junction (in the drawings below). In this way, a competitor who copies the chain guard or the head tube/top tube junction should be covered by the registered designs, regardless of the appearance of the remainder of the bicycle. Having said that, the design of the whole frame including both features is, by the simple inclusion of more features, more likely to meet the ‘individual character’ threshold. Therefore, Nick registered a further design of the whole frame.

When to register the design?

It is possible to file too early. There may be little point in registering your first sketch of the design if the design is likely to be substantially changed at a later date.

If you are considering seeking both a patent and a registered design in relation to different aspects of a product, you must ensure the design application is not published before the patent application has been filed, as that could be fatal to the patent.

Sometimes the importance of a design feature is apparent only after the product has been well received commercially. Fortunately, in the UK and EU, it is possible to register a design up to 1 year after the first publication of the design, although it is advisable to apply as soon as possible after the first publication, to reduce the possibility of a conflict with another company which may attempt to register your design or something similar.

How long does it take?

Whilst a patent takes some two years on average to be granted, a design is often registered within a few weeks. If your product is likely to hit the market quickly, it can be useful to have a registered design available quickly, for use as an enforcement tool, particularly whilst a granted patent is awaited.

How much does it cost?

An IP professional can advise you on the formal and substantive criteria of design registration, as well as explaining the procedure. An IP professional’s charges for preparing and filing an application for a UK registered design should be around £200, and charges for preparing and filing an application for an EU registered design (covering the 27 countries of the EU) should be around £550.

This article cannot cover all of the issues involved. For further information on registered designs, contact British Library partner, Matthew Allen at AllenIP.