Registered designs are generally used to protect the appearance of products. A registered design is a form of Intellectual Property (IP) right that can be used to stop others from making, selling, offering for sale, etc. designs that do not create on the informed user a different overall impression.
We can register your design in the UK (read more), or throughout the European Union (EU). As the UK is going to leave the EU (“Brexit”), it is not yet known what the status of European Registered Designs will be after the UK leaves the EU. When new countries join the EU, the protection conferred by European Registered Designs automatically extends to those new countries. By analogy, when the UK leaves the EU, it may be that European Registered Designs will no longer have effect in the UK. As such, we are advising all clients to file parallel EU and UK applications, and if these are done simultaneously, we process the UK filing for a nominal additional charge.
The European Designs Directive places no restrictions, per se, on the types of designs that can be protected. Designs are protected in an abstract sense, and so they are not restricted to particular products. As such, the design of a toy automobile, for example, also (potentially) covers the design of full-sized automobiles, novelty computer mice, pepper pots, etc. all having the same outward appearance. You can use Registered Designs to protect the appearance of packaging, graphics, web site layouts or anything else for that matter in which visual appearance is an important factor.
To be capable of valid registration, the design must be new and create a different overall impression. It must not be dictated solely by its technical function, nor must the design be dictated by the shape of something else (the so-called “must fit” or “must match” exceptions. We can advise on a case-by-case basis, so please contact us if you need more help.
The European Designs Directive allows “multiple” applications to be made, provided the designs in question fall into the same Eurolocarno class. It is therefore possible to apply to register several designs at once, using a single application process. The main benefit of making a “multiple” application, as opposed to a series of separate applications is a significant reduction in costs.
We provide design registration services on a fixed-fee basis. Our fixed-fees include our professional service charges for providing pre-filing advice, selecting the appropriate Eurolocarno class(es), filing the application online, attending to payment of the official fees, the official filing and publication fees (which includes the first 5 years’ renewal fee), reporting filing and providing the application number, receiving and forwarding the filing receipt and the registration certificate, and entering the case in our renewal reminder system.
Provided you send us up to 7 good quality representations of each design to be protected, we can usually file the application within 48 hours of receipt. Registration (grant) usually takes somewhere between 2 to 10 days to complete.
Because we use the European Intellectual Property Office’s (EUIPO’s) online filing portal, we effectively enter the filing data directly into the registration system. Almost all that the EUIPO does, therefore, is to check the application for errors and approve registration. Occasionally, there are glitches, but we include dealing with these in our fixed-fee procedure. Unlike in many other countries, the EUIPO does not examine applications. The reason for this is that because so few registered designs are ever actually litigated (compared to the number filed), it was deemed to be disproportionate to expect every applicant to pay for an expensive examination procedure when, in reality, the IP right would be unlikely (statistically) to ever be enforced. Crucially, because there is no presumption of validity, the mere fact of registration does not give rise to any positive right to use the design.
A Registered (European) Community Design (RCD) can remain in force for up to 25 years from its filing date, subject to renewal payments every 5 years.
If you have filed a registered design application in another Paris Convention country less than 6-months prior to the RCD’s filing date, you can claim priority and effectively backdate the RCD to the earlier application’s filing date.
Provided the design has not been in the public domain for more than 1 year, it is usually possible to validly file a Registered Community Design application by relying on the “grace period”. There is one crucial proviso, however – the first public disclosure of the design must have made the design in question known to entities operating in the EU, otherwise, the design may lack novelty. We can advise on this on a case-by-case basis.