Design rights are rights in how a product looks. The product can be either two or three-dimensional.
What are design rights?
How do design rights arise?
'Unregistered' design rights arise automatically on creation of the product.
Provided that the design is new and original you can also apply for it to be 'registered' in the UK , EU or internationally.
What do design rights do?
Design rights prevent others from copying them.
Registering a design means that no one else can use it, even if they claim to have come up with the same design independently.
How long do design rights last?
If a registered design is granted it will last for up to 25 years but needs to be renewed every five years.
Unregistered design rights last for 15 years in the UK, and three years in the EU, from the end of the first year that the product is first marketed.
How can I protect my design rights?
You can apply to register your design online at the Intellectual Property Office website or by filling in the appropriate forms and sending your application by post. The fee is £60 for the initial application and £40 per design in any multiple application if you apply by post and £50 for the initial application for one design if you apply online.
When you share your valuable confidential information, including registered and unregistered design rights, with another business, consider using an appropriate confidentiality agreement. Use Rocket Lawyer’s simple interview process to create a mutual Confidentiality agreement or a One-way confidentiality agreement, depending on whether one or both parties are sharing confidential information.
Make sure your agreements with independent consultants have the necessary provisions relating to IP created in the course of working for you.
If a party breaches your design rights, consider issuing a Cease and desist letter to protect your intellectual property.
Can my design be registered abroad?
As with any IP right, registering your design in the UK does not grant protection abroad. If you want to register your design in other countries, you can either:
apply for a Registered Community Design (RCD) covering the whole of the EU
apply directly to the IP offices of most major countries around the world. You can use the WIPO Directory to find the country and corresponding office
apply using the Hague System where you can apply to a number of different countries or territories at the same time, using only one application
If you have an unregistered design right, you may still be able to get protection. For example, using the Unregistered Community Design (UCD) right which covers the entire EU. For more information, read Protecting intellectual property overseas.
What impact will Brexit have on RCDs?
From 1 January 2021, new RCDs are protected in the EU, but not in the UK. However, all pre-existing RCDs will continue to be protected in the UK through the registration of a ‘comparable’ design rights at the Intellectual Property Office (IPO). This process is automatic, so if you currently have RCDs, they will be automatically copied across into UK-registered design rights.
Businesses, organisations or individuals that had ongoing applications for an RCD by the end of the transition period have an extension of nine months from 31 December 2020 to apply in the UK for the same protections. This means that such businesses, organisations or individuals have up to and including 30 September 2021 to apply for a UK design right.
The departure from the EU has no impact on the protection and validity of UK-registered design rights within the UK.
‘Comparable’ design rights
Under the Withdrawal Agreement, the IPO created ‘comparable’ UK design rights for every registered EU design right.
These ‘comparable’ design rights will be:
identical to the original RCD
fully independent UK design rights (ie it can be assigned, challenged, licensed or renewed separately from the original international (EU) design)
Owners of RCDs will not need to file a new application or pay any application fees for the ‘comparable’ design rights.
Those with applications for an RCD which were ongoing at the end of the transition period (ie where not yet registered as an EU trade mark on 31 December 2020) have been granted a nine month extension (up to and including 30 September 2021) to apply for a UK design right. Where such an application is made, it will be subject to the application fees and the UK’s examination requirements.
For more information, read the government’s guidance.
UK Address for service
Applicants for new UK design rights will require a UK, Gibraltar or the Channel Islands address before their application will be considered by the IPO.
Owners of ‘comparable’ design rights are not required to provide such a UK address for a period of three years from 1 January 2021. From 1 January 2024, the IPO will require a UK, Gibraltar or Channel Islands address for service where new contentious proceedings are brought. For more information, visit the government website.
What impact will Brexit have on UCDs?
From 1 January 2021, UCDs will no longer be valid in the UK, instead these rights will be immediately and automatically replaced by UK rights (as continuing UK unregistered designs). Such rights will continue to be protected in the UK for the remainder of the three year term attached to it.
Supplementary unregistered design
To protect UCDs, a UK ‘supplementary unregistered design’ (SUD) has been created. This right will ensure that the full range of design protection provided in the UK before 1 January 2021 will remain available.
SUDs will offer protection similar to the protection offered by UCDs, however, this protection will not be extended to the EU. SUDs will mirror UCDs by providing UK protection for both three and two dimensional designs for a period of three years.
A SUD will be established by first disclosure (ie making the design available to the public in such a way that the interested parties can reasonably be aware of the design) in the UK (not first disclosure in the EU). However, it may destroy the novelty in that design, should the owner of a SUD later seek to claim UK unregistered rights. Similarly, first disclosure in the UK may not establish an UCD and could destroy the novelty in that design, should the owner later seek to claim EU unregistered rights.
For more information, see the government's guidance.