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Do I have to identify the designer?
It is possible to waive the name of the designer when filing a European Community Design, but you should be sure that you have the rights to the design

Seven registered design disasters, and how to avoid them

by | Mar 29, 2021

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Registered Designs are probably the least well-known of the Intellectual Property rights, but they can be a powerful and cost-effective tool, if used properly.  A Registered Design protects the appearance of a product, and can be used to prevent competitors from marketing products which produce the same overall impression on an informed user.

Of course, that’s not the whole story.  The devil is in the detail, and there are various factors which need to be taken into account to get the best protection for your designs.  Make sure you don’t fall into any of the traps below!

(This article was first published in 2013, and has now been updated March 2021)

1. You don’t register because “it’s a functional product, so registered designs don’t apply”

It is true that registered designs cannot protect “the way things work” – that is the domain of patents.  Features of the appearance of a product which are “solely dictated by technical function” are excluded from design protection.  However, this is rarely a significant limitation in practice.  A product which does a technical job will look the way it does partly because of that technical job, but there will almost certainly be a “product design” element as well.  If the product could do the same job and look different, even just a bit different, then there is potentially a design to be protected.

It is very rare that the design of a whole product is really “solely dictated by technical function”.  With that in mind, registered designs should be considered for almost any product which somebody is potentially going to look at.

Here are a few examples of registered designs for useful products which have actually been successfully enforced.

 

4 5 6
Coat hanger Electric skin brush Blind headrail
UK Registered design 2080944

Mainetti v Hangerlogic [2012] EWPCC 42

EU Registered design 000407747-0001

L’Oréal v RN Ventures [2018] EWHC 173 (Pat)

EU Registered design 000361118-0001

Louver-Lite v Harris Parts [2012] EWPCC 53

 

2. You disclose the design before registering

In the UK and Europe, a twelve month grace period is available for validly registering a design following disclosure.  However, you should not take advantage of this grace period without fully understanding the risks of doing so.

Most other countries around the world do not have a grace period for disclosure.  Unregistered design rights are also rare outside Europe.  By disclosing your design before filing your UK or European Design registration, you potentially destroy any possibility of validly registering your design overseas.

Furthermore, if you launch a product before filing a registered design, and a competitor subsequently launches a similar product (again, before your registration), then no action can be taken unless you can prove that the competitor copied your design.

Where the grace period is relied on, there is a burden on the design owner to establish that they are the creators of their design or a successor in title[1]. This ought not to be particularly onerous if good records have been kept, but nonetheless design owners have sometimes come unstuck on that point.

We don’t say that the grace period should never be used.  For small businesses in particular, deferring the cost of registration until the commercial success of a product has been established can be a valuable option. Reviewing your registrations within the grace period and potentially registering more designs might also be a good idea. However, at the very least you should discuss your plan with an attorney before your product is disclosed.  That way, the best strategy can be developed bearing in mind your requirements for protection at home and overseas and the need to manage your cashflow.

[1] See T-68/10 Sphere Time v OHIM

3. You update the product, but fail to register the newer version

Whether a particular competing product infringes or does not infringe a registered design depends only on whether the allegedly infringing product is or is not too close to the design which has been registered.

It is of course very common for designs of products to go through multiple versions, and almost all products which reach the marketplace will look somewhat different from the picture on the drawing board at the beginning of the design process.

For the best protection, it is vital that registrations are secured for updated versions.  Failing to do this can allow a competitor to release something which is very similar to your product, but different from your registered design.

This pitfall is extremely well illustrated by the high-profile Samsung v Apple[1] case in the Court of Appeal.  Apple relied on a European Registered Design filed back in 2004 – the iPad was not released until 2010.  The problem this caused for Apple was neatly summarised by the Judge in the case, Sir Robin Jacob.

“…this case is all about, and only about, Apple’s registered design and the Samsung products. The registered design is not the same as the design of the iPad. It is quite a lot different. For instance the iPad is a lot thinner, and has noticeably different curves on its sides… Whether the iPad would fall within the scope of protection of the registered design is completely irrelevant. We are not deciding that one way or the other. This case must be decided as if the iPad never existed.”

[1] [2012] EWCA Civ 1339 

 

1 2 2 3
iPad

(Image credit: Yutaka Tsutano / Flickr)

Apple’s registered design Samsung Tablet 10.1

 

The lesson is clear – if you want to protect your place in the market, keep your registrations up-to-date!

4. You don’t really consider the scope of protection provided by the registration

In contrast to a patent application, it is not necessary to describe in words what is new about your design, and what protection you are seeking.  But just because you don’t have to write it down, that doesn’t mean you don’t have to think about it!

It’s useful to keep in mind the legal definition of a design that can be protected:

“design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

This definition gives a non-exhaustive list of features which might be considered to be part of a design.  It’s worth taking the time to think about each one, and which are the most important in your particular case.

For example, if your product has a new shape and a new surface pattern in a particular colour, then you need to think about what you want to protect.  If you file colour photographs showing the whole product, then potentially a product with the same shape and pattern but in a different colour might not infringe, depending on the importance of the colour to the overall impression.  Almost certainly, a completely different product with the same surface pattern would not infringe – so if you want to protect the pattern, you should consider a registration which does not include the shape of the product at all.  Likewise, a registration covering the shape without the surface pattern is probably advisable.

In the UK you can submit a short written “disclaimer” listing anything shown in the drawings you don’t want to be included. In Europe you can’t, so it is particularly critical to make sure there is nothing in the drawings which you don’t want to limit the scope of protection.

The Magmatic “Trunki” suitcase is a well-known example of a registered design which turned out to be narrower than the owner had hoped. Greyscale CAD renders were registered. The Court of Appeal found it relevant that “each of the representations shows a distinct contrast in colour between the wheels and the strap, on the one hand, and the rest of the suitcase, on the other”. This was “a fairly striking feature of the CRD and it is simply not present in the accused designs”.

 

Trunki image
Suitcase

EU Registered design 000043427-0001

 

To be fair to Magmatic, the ”Trunki” design was registered in the early days of the EU design regulation and it is easy to be wise in hindsight.

5. You file inadequate representations

If you file a representation which for some reason is inadmissible, then in most cases your only choices will be either to delete the representation or to lose your filing date.

So before you file, check carefully that all your representations do in fact show views of exactly the same design (i.e. features match in different views).

Also, be mindful of the overall quality of the images you are filing – if they are so poor that the design is not clearly shown, then what you are registering is not a design, just a blur!

6. You forget to renew your UK registration

Since the UK left the European Union EU designs no longer provide coverage in the UK.

However, every owner of an EU design which was in force on 31st December 2020 was given, automatically and for free, an equivalent UK registration.

The UK design has to be renewed separately though – so don’t forget that when the renewal date for your EU design comes round, you need to renew in the UK as well.

7. You file a design without consulting an attorney

Yes, it’s easy to register a design and get a certificate.  But getting good legal protection is more complicated than that.

At Albright IP, we regularly represent clients on both sides of disputes where design infringement is alleged.  We’ve seen the problems which can arise when the registration is filed at the wrong time, showing the wrong product, or showing unimportant features.  We can advise you on exactly what to file to get the best possible protection within your budget.

If you have any questions about registered designs, design patents or IP in general, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you. 

 

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