How to protect a product design

Picture the scene, you’ve designed an amazing product, possibly after years of development. You put it on the market and it sells well, really well in fact and after a few years of selling it strikes you that it would be a good idea to protect the design. That’s fine right?

Well no, that’s actually a bit of an issue and an issue that we come across all too frequently when speaking to new clients. The problem here is that Registered Designs (a valuable but relatively inexpensive intellectual property right) in the UK and EU need to be registered within 12 months of their first disclosure. So if your design has been out in the big wide world for longer than 12 months, any registration you file, will be vulnerable to attack. Such an attack is likely to result in it being cancelled completely, meaning that you will only be left with unregistered design rights.

What’s the issue with unregistered design rights, they sound lovely? I hear you ask. Well yes they’re a nice idea (because “unregistered” means that they’re free to own) but they have a number of drawbacks. First and foremost is their limited term. Registered designs can last for up to 25 years, subject to renewals every 5 years, and that’s a pretty good amount of time to monetise your creative work. However unregistered rights expire far more quickly. For example the main UK unregistered designs only last for 10 years from first sale, and after the first 5 years you need to give anyone who wants one a licence to use them (this is called a ‘licence of right’). EU unregistered designs are even worse, and expire after 3 years, barely enough time to make a proper impact on the market and generate enough revenue to really justify your work.

And that’s not all, if someone creates a similar design to yours, and you have an earlier registration, they cannot avoid a claim by claiming that they’ve never seen your design before. Essentially it’s there job to check for earlier registrations and avoid them. This makes the job of stopping infringers much easier and gives your claim a higher chance of success. However, if you’re relying on an unregistered design as your infringed IP right, the burden is on you to prove that the copier actually copied. If they just happened to create a very similar design but had never actually seen your design, they’re likely to have a very strong defence to your claim. A defence that simply wouldn’t have existed if you had registered design within the 12 month grace period from first disclosure.

So, how should you protect your product design? The answer is register it, ideally with the benefit of some prior legal advice to make sure that what’s filed is the best representation of your design. If you need someone to give you that legal advice, just drop an email to info@briffa.com and one of our friendly lawyers will give you a ring.

Written by Will Miles, Partner