DESIGN REGISTRATION – HOW TO APPLY

Got an amazing design that you want to protect? But your not sure how to or why to? Check out what we have to say…

 

Design registration is a great way to protect your design and by protecting your design there is a number of benefits such as making money! There are times when a design registration is more benficial than a patent but for now we will focus solely on the design registration as not to data dump on anyone!  A good example of Design Registration is the PG Tips monkey, you cant patent this monkey because soft cuddly toys have been out for many many years so its not innovative nor an inventive step but you can protect the look of the monkey particularly if the monkey happens to look unique!

 

Here are some of the benefits of design registration: –

Make money from your design, this is the number 1 motivation behind design registration – to make money!  A registered design allows you to sell your design and the intellectual property (IP) rights to it; or licence somebody else to use your design whilst you retain the IP rights – this is the preferred option typically you will make more money with the least amount of work.

Exclusive design rights of your design which means that you can stop people making, offering, putting on the market, importing, exporting, using or stocking for those purposes, a product to which your design is applied.

Protect all aspects of your design, the overall look of the whole or a part of your design. You can claim protection for the shape of a product, a two-dimensional surface pattern or graphic design, or a combination of the two.

Long period of protection, Registered Designs can be renewed every 5 years up to a total of 25 years.

Easier to enforce, the existence of your registration may be enough to stop anyone infringing your design irrespective of whether they copied or came up with the design independently.

Deferred publication, you can choose to defer registration publication of your design for up to 12 months. This allows you to establish a filing date, but gives you more time to develop the product or apply for a patent before publicly disclosing the design on IP Office Register.

Public benefit, Intellectual Property registration aims to protect the creator but also to benefit the public as publication of registrations showcases developments in design and stimulates further innovation.

 

But what if I don’t want to registry a design? Well, it depends on your design and circumstances.  Sometimes you dont need to registery a design and you may not have to to get design protection either.  If you are looking to license your design it maybe better to get a design registration, it depends on how good your design is, how much it cost to develop, how much money you want to make and who you are going to license it to, some companies will license your design without a design registration and honour you as the designer/creator other companies will not – typically larger companies look for a more formal process as they are more worried about being sued!  Some designers who create bespoke furniture are not likely to apply for a design registration as each piece is a one off creation by the maker themselves and so they live off reputation, design and build quality.

If you decide not to register there is still some protection through unregistered Design Right or copyright: However, there are some limitations to what may be protected:

  • You can only stop people using your design if you can prove it was intentionally copied so Design Right is difficult to enforce.
  • You can only protect the three-dimensional shape.
  • Two dimensional designs may be protected by copyright but this is more difficult to enforce than a Registered Design.
  • Protection only lasts for a maximum of 15 years and is subject to a Licence of Right for the last 5 years.

A great example of Design Registration is Cath Kidston, Cath Kidston and her company have benefited from registering designs and Repeating Surface Pattern (RSP)  in forms of products such as cups, tea towels wallpaper bedding etc the list goes.

Cath Kidston (RSP) repeating surface pattern wallpaper.

With the greatness of design registrations and patents there is a dark downside to it…disputes! Disputing Intellectual Property rights is insanely expensive and time consuming, you may have heard of a technology company called Apple that makes Tablets and TV’s and you may have heard of a technology company called Samsung that makes Tablets and Tv’s.  One company claims its designs where copied by a rival company while the other company claims it’s designs are unique, whatever the end result its costly and time consuming and because you win in one country doesn’t mean you will win in another.  For instance James Dyson hasn’t been granted the patent for his ‘rotating ball thingy’ on his vacuums in some countries and so the disputes continue…

Sadly these disputes are not unique cases and that there is literally hundreds of IP battles going on throughout the galaxy, so choose which designs you would like to design register wisely and exploit your fantastic design!

 

Check out the images below for the Design Registration form, The IP Office has a handy guide in filling in a Design Registration form which can be found here and to download the form have a look here.  As for filling in the form its as easy as 1-2-3 a-b-c, the questions are quite straight forward but you should keep in mind while filling a design registration application is that if you are also filling a patent application for the same project then try to make sure that they are published together to avoid any possible down sides or early publications of  the patent details which would void your patent – oh dear!

Lets cover the areas that will make you say and think ‘hmm…

 

As mentioned above there’s really not that much to the form and you should be able to complete it yourself.  Throughout the form you will see text highlighted in Bold and this is mandatory while the other questions are optional.

 

Section 1 – You don’t have to provide a reference, the IP Office will use the reference if provided.  From our experience of Design Registration we have never used a reference.

Section 3 – You maybe wondering what a Design ADP number is, if you have never applied for a Design Registration then you will not have one however don’t worry as it is not a mandatory requirement for the design registration application.

Section 5 – FEES! Although it is kind of expensive, it is affordable to apply for a design registration.  It costs GBP £60 to apply to register a single design or the first design in any multiple application. For every additional design in any multiple application it costs GBP £40 per design.  When you are ready to request publication and registration of deferred designs you will need to file Form DF2C and pay a publication fee of GBP £40 per design.  One of the simplest ways of paying is by sending a cheque along with your completed forms and designs however this is an old method of transaction and so they accept debit and credit cards as well as bank transfers.

 

NOTE:- You will see at the bottom of the form ‘How many pages are you sending us?’ this is the total amount of pages you are sending which includes the forms and designs that you are sending.  We just thought you might want to know this – just in case!

 

Section A – This must be the same applicant as in section 3. You cannot include designs owned by other people with this application. – Pretty straight forward.

Section B – State what your design is, watch, pepper mill, wheels etc. State whether your design has patterns on the surface such as wall papers, textiles etc. Keep it short descriptive and to the point.  You are allowed to classify the design in a maximum of 4 different categories (use them all!) however the IP Office may change categorises if they believe your design is more suiting to another one – this is to ensure when people search the IP Office online database they find your work.

Section C – Your illustrations should show enough different views of the design so that there is no doubt about exactly what you want to register.  Make sure what you do is easy to understand, there should be no doubt of the shape, patterns and forms of what your design is.   So include as many views as possible of your design so that the reviewer understands without a doubt your design. State how many views of the design you have issued so that they know nothing is missing when they receive your design.

Section D – Remember the part about Cath Kidston? The Cath Kidston design team will RSP each design to ensure that the original design is not replicated or counter fitted and that they benefit from their designs.  Read this small section taken from the IP Office website for Section D. Designs of a repeating surface pattern (RSP) should show the complete pattern and be surrounded by enough of the repeat to fully illustrate the entire pattern. So if you are, for example, applying for the design of wallpaper or textile materials that are intended to cover a large area, make sure that your design illustration covers more than the whole pattern, and say “RSP” in section D. Otherwise we will treat the design exactly as it appears in the illustrations, without any repeat.

Section E – You may give a brief description of any design features that you feel may not be adequately shown in the illustrations, such as lines, contours, colours, shape, texture and materials used.

Section F – You may have designed some awesome accessories for a previous design or someone elses design and would like to illustrate YOUR proposed design in context.  It maybe that only a small part of your whole design requires a design registration and it is possible to do so.  This small section has been taken from the IP Offices website and describes best how to complete Section F – In some cases you may want to protect the design that is applied to only part of a product. In these cases, you must clearly identify the design features on the part or parts of the product you want to protect. You can do this by (i) colouring the part or parts in question, (ii) drawing the part or parts in question in solid lines and the other parts in dotted lines, or, (iii) carefully circling the part or parts in red ink. You must do this on all the views of the product in your illustrations. You should then include a “partial disclaimer” in section F worded something like “The features of the design for which protection is sought are the [lines, contours, colours, shape, texture or materials as appropriate] of the part or parts of the product shaded in blue in the illustrations”. Limitations and disclaimers will restrict the scope of the registered design.

Section G – Deferring a publication is fine however there are extra fees associated with it as well as the human factor – don’t forget it only lasts a maximum of 12 months and cannot be extended.  If you fail to pay the IP Office fees along with submitting the “Designs Ready Reckoner” form you application will be abandoned and you will not receive your design protection and of course be out of pocket! So keep on it!

Section H – If you are claiming priority from an earlier design application made in another country, provide details in this section. You must apply within 6 months of your earlier application.

Section I – Only fill in this section if you are not the person or company named in the priority application in section H.

 

And the Third page – You should use this sheet for illustrations of your design. If you need to copy the sheet to show the different views of the design then please do so, and show the continuation of the design number, for example, design number 4 continued out of a total of 7.

  

Please note that this does not constitute as legal advice.

 

 

 

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