Designs - UK and EU Flashcards
What is a design?
A design is the ornamental or aesthetic aspect of an article. The design may consist of 3-dimensional features, such as the shape or surface of an article, or of 2-dimensional features e.g patterns, lines or colors.
Covers wide variety of products in industry and handicraft, e.g technical, medical instruments, watches, jewelry, vehicles, textiles
Also relevant for graphic symbols or logos
What does a design need to be in order to be protected?
New (have novelty) and original (individual character)
What are Unregistered Design Rights in the UK?
Also known as Design Right
Provides for automatic protection (without need for formal registration)
Automatically protects design for 10 years after it was first sold, or 15 years after it was first created (whichever is earlier)
Has to be original and not commonplace
Can be used to stop someone from copying design
Only protects shape and configuration - does not cover 2-D marks
Ownership restrictions based on geography - only some countries can qualify for Design Right in UK, Channel Islands, Hong Kong and New Zealand
What are Unregistered Designs in the EU?
Called unregistered community designs (UCD)
Offer automatic protection without need for formal registration
Protection lasts for 3 years from date on which design was first made available to the public within the territory of the EU
Has to be new/possess individual character
Can be used to stop someone from deliberately copying the design
Offers protection for both 3D and 2D designs
How do Unregistered Community Designs work in relation to Brexit?
Post-Brexit, preexisting UCD rights continue to exist for their period of protection in the UK through ‘continuing unregistered design rights’
Supplementary unregistered design rights created (after Brexit) to ensure full range of design protection continued in UK
What are supplementary unregistered designs?
Similar to protection provided by UCD, I.e 2D and 3D designs - new and individual character
Automatic protection for 3 years but from date on which design first made available to public within UK
Why is it advantageous to register a Design Right?
Duration - registered designs can last up to 25yrs subject to renewal
Wider scope of protection - protects against other designs even if infringing design has been developed in good faith
Easy proof of ownership and date
What is an important note when it comes to disclosures and registered designs in the UK?
In the UK it is necessary that a design has not been disclosed for more than 12 months before filing the design, otherwise its novelty would be destroyed by its own disclosure
The 12 months following the disclosure of a design is known as the grace period
Who can apply for a UK Registered Design?
The owner of a design is typically the designer (or employer if created during employment)
Designers can assign their rights
Applicant must have legal personality
Address for Service if non UK applicant
What do we need in a UK Registered Design application?
Views/Representation (show what we are protecting)
- need to show the design and design features being claimed, shapes, lines, contours, textures etc
- line drawings, photos, CAD drawings allowed
- online up to 12 views
Description
(Optional)- text explaining features of design (NOT used to explain technical aspects of the design)
May wish to include a disclaimer (le features that you do not wish to protect)
How are UK Registered Designs classified?
No classification used on filing, although once registered it will be assigned a Locarno Class by the examiner
Can you claim priority on a UK Registered Design?
Yes - priority can be claimed from a first-filed design, must be within 6 months of filing first filed application
Details need to be provided of filing date, application number and country of first filing
Either have to provide proof (priority document) or declaration, filed within 3 months from filing date
What is deferment for Registered Designs?
You can defer publication of your design (might not want a competitor to know of designs before a product launch)
Maximum deferment period - 12 months
You must register a deferred design within 12 months or your application will be cancelled
What are the fees for Registered Designs?
Online - (paper more expensive)
£50 for first design
£20 for designs 2-10
£20 for designs 11-20 and so on
Can file multiple design applications at once - up to 50
How does examination work for UK Registered Designs?
Application examined by the UKIPO for formalities and technicalities only
If deferment has been requested a form DF2C must be filed within 12 month period so design is published
Deferment - £40 per design
What are some key requirements for Registered Community Designs?
In the EU, RCD’s have to be new (having novelty) and have individual character
Also necessary that design has not been disclosed for more than 12 months
Who may apply for a Registered Community Design?
Anyone with legal personality, e.g individuals, companies, states of incorporation
Professional representative not required if based in EEA, otherwise need to appoint a legal representative/practitioner in EEA
What language can a RCD be filed in?
Same requirements as for EUTM
1st language - any of the national languages of the EU
2nd language - English, French, Spanish, German, Italian
How do Views/Representation work for RCD’s?
Important these show the design and design features being claimed, I,e shapes, lines, contours, textures, materials etc
Line drawings, photographs and CAD drawings allowed
Up to 10 views of design online (but only 7 protected - registered and published by EUIPO)
Description optional - explaining features of design (NOT the technical aspects of the design)
How does classification work for RCD’s?
Locarno Classification to be used
EUIPO prefers applicants to use pre approved terms (online tool DesignClass)
Can you file multiple RCD applications on a single application?
Yes - then referred to as a multiple design application - fee savings
Results in separate registrations
In a multiple design application all designs have to share same Locarno class with exception of Class 32 (ornamentation) which may be entered in addition to
Can you claim priority on a RCD?
Yes - within 6 months of filing first filed application
Priority can be claimed from design applications, utility models and exhibition priority
Details need to be provided of application number, filing date and country of first filing
Need proof - either pdf copy of priority document, or DAS (digital access service) code (allows priority documents and other similar documents to be securely exchanged between participating IP offices) - priority doc needs to be filed within 3 months of filing date
How do fees work for RCD’s?
3 different types of fees - registration, publication, deferment of publication
Registration and publication paid together unless deferment is requested
If deferment requested then registration and deferment of publication paid together, then publication paid either at that time or in deferment period
Reg fees
€230 for first design
€115 for 2-10 designs (each)
€50 - more than 11 designs (each)
Publication fees
€120 first design
€60 for 2-10 designs (each)
€30 - more than 11 designs (each)
Deferment of publication fees
€40 first design
€20 - for 2-10 designs (each)
€10 - more than 11 designs (each)
How does examination work for RCD’s?
Examined on formalities and technicalities only
If deferment requested you must ask EUIPO to publish the design 3 months before end of 30 month deferment period (i.e last working day of the 27th month) - but can state whether you want design published then or at end of the period
What are the benefits of design protection?
- Locarno Classification does not affect scope of protection (i.e protection is not just restricted to those products)
- Class 32. - ornamentation - great way of further protecting likes of logos, graphic symbols, building another layer of protection
- Packaging and Get Up - can be protected through both designs and trademarks, designs cheap, quick, easy to obtain
- No non use provisions for registered designs
- Designs great for 3D marks (notoriously hard to register as a TM)
- Designs can be used to challenge TM’s
What happens pos5 registration for UK RD’s and EU RCD’s?
5 year terms of protection (calculated from application date)
Renewable for 5 year periods up to maximum of 25 years
6 month grace period
Fees increase incrementally for each renewal
Online
What are the renewal fees for UK RD?
1st renewal (5-10) - £70
2nd renewal (10-15) - £90
3rd renewal (15-20) - £110
4th renewal (20-25) - £140
Late fees - if not exceeding 1 month no fee
Each succeeding month - £24
What are the renewal fees for RCD’s?
1st renewal - €90
2nd renewal- €120
3rd renewal - €150
4th renewal - €180
Late fine surcharge 25%
How does restoration work for RD’s and RCD’s?
Possible in UK
not in EU - restituto in integrum
