1 . Some, but not all, designs can also be protected by registration. The main advantage of a UK Registered Design over an Unregistered Design Right is that an Unregistered Design Right can only be used to prevent copying, whereas a Registered Design is a true monopoly and applies even if the alleged infringer (The Chapper Company) honestly came up with the same or a similar design independently and without copying.
2 . The validity of a UK Registered Design can be impugned:
(a) if the design is not new and original,
(b) if the design features are functional, or
(c) if the article is one which, when people buy it, they are unconcerned about its aesthetic features.
So for example, a car exhaust might pass criterion (a) but would fail both points (b) and (c) since its design is wholly functional in that it has to run a fitting path between two points on a car and do the job, and not many people buy a car exhaust because of its aesthetic appearance. It would, however, still be capable of protection by way of Unregistered Design Right and Copyright.
Thus, although the legal rights are somewhat delayed, they have a measure of retro-activity which, in commercial terms, can persuade a potential infringer against jumping on the author's bandwagon.
3. Nevertheless, for many articles, protection by way of a Registered Design is very important and is to be recommended wherever the facts warrant it. Jewellery, light fittings, domestic white goods, clothing are notable examples. The disadvantage is the cost (for which consult a PatentAgent/Attorney) necessary for each design. This may be acceptable for one-off designs such as a new nutcracker or a new TV set or a new fan heater, but may become quite prohibitive for say a fashion house which is producing scores of new clothing designs each season and would have to apply for Registered Design protection in respect of each of them in advance of any public disclosures of those designs.
4. Like Patent Law, the requirement that there be no prior disclosure is crucial in respect of design law since, for validity, the design must be both "new" and "original". However, disclosure by the author up to one year before the priority date of the application for the Design Registration will not invalidate the application, although it should be borne in mind that such release of information may lead to untraceable use of it by third parties. Also, prior knowledge only abroad, and not in the UK, would not invalidate a UK Registered Design.
5. It usually takes between 3 to 9 months from initially filing an application for a UK Registered Design before the registration is granted.
The comments above should not be regarded as a definitive statement of the law and are provided for general information purposes only. For further details, advice, and an indication of likely costs, please contact us.
© E. Eder 2004 and Bromhead Johnson 2008