What is a design right?
A design right is a right of ownership in the appearance of the whole, or a part of a product (internal or external). Whereas a patent protects the way a product functions or how it is manufactured, a design right protects those elements that make a product (or a part of a product) look unique. The owner of a design right has the exclusive right to reproduce the design for commercial purposes.
Do I have to register my design to get protection?
No. A design right is created automatically once the design has been recorded in a design document, or an article has been made to the design. In the UK, an unregistered design right gives the owner an exclusive right to use the design for 5 years after it is first marketed. After this period third parties must be allowed to apply for a licence to use the design, for which the owner may receive royalties. An unregistered Community design right lasts for 3 years from the time it is first disclosed to the public.
What can be registered as a design?
Those features that make an object or a part of an object look original may be registered as a design. The lines, shape, contours, colours, and/or texture and material of an object may therefore form part of a design. Two-dimensional elements, such as ornamentation, graphic symbols and typefaces may also be registered as a design. Computer programs are expressly excluded. For a design to be registrable it must be original (i.e. an identical design must not already be available to the public), and must possess an individual character which distinguishes it from other designs on the market.
Why should I register my design?
• An unregistered design right only protects against the act of copying. If a design can be shown to have been created independently, the owner’s right is not infringed. However, a registered design gives the owner monopoly protection. This means that even if a competitor innocently uses the same or a similar design right to that which you have already registered, this constitutes infringement.
• It is only by registering a design that surface ornamentation of a product can be protected. An unregistered design right will not attach to any two-dimensional elements.
• A registered design right can offer a maximum of 25 years protection, whereas an unregistered right in the UK only offers 5 year exclusive use. An unregistered design right cannot be renewed. The certainty of a registered right may help you secure financial backing, and thereby encourage future exploitation of the design.
Why should I protect my design?
The design of your product may be just as important as the branding of your company. Consider, for instance Apple’s iPod design. Without its futuristic shape and colouring, it would be difficult to distinguish from any other mp3 player. In order to fully protect your investment in your product, you need to prevent competitors from using your design.
For how long does a design right last?
In the UK, a registered design right lasts for 5 years, but may be extended to a maximum of 25 years from the date of filing the application. An unregistered right lasts for a maximum of 15 years from the end of the calendar year when the design was first recorded, or 10 years from when the design was first made available to the public. However, after the first 5 years, third parties must be allowed to license the use of the design in exchange for royalties. In the EU, an unregistered design right lasts for a maximum of 3 years.
What designs cannot be protected through registration?
• a design which appears the way it is for technical reasons, in order to make the product function
• a design which offends public morality or accepted principles
• a design which incorporates a foreign flag or protected symbol may not be used without permission from the country concerned
• A design which includes elements which conflict with earlier copyright protected works
How long does it take to register a design?
If there are no complications, a UK design registration can be completed within 2-3 months. A Community design may take up to 4 months to register.
Should I register my design if I want to keep it a secret?
A Design right must be registered within 12 months of first being made available to the public, otherwise it will not be considered to be novel. This allows a one year grace period in which to test the product on the market before deciding to invest in a design. Once your design has been registered, details of the design will be publicly accessible at the Intellectual Property Office and may be viewed on its website. However, if you want to keep your design a secret, it is possible to postpone publication for up to 12 months from the application date. This is known as deferment. For Community registrations, secret designs can remain unpublished for 30 months.
Does my design right give me protection abroad?
An unregistered design right gives you protection in the UK for 10 years and in the EU for 3 years. A design can be registered in the UK through the UKIPO, in which case protection extends only to the borders of that territory. If you register a design through the OHIM, your design will be protected in the 27 member states of the EU.
Can I register more than one design in an application?
Yes. In the UK it is possible to register a number of new designs in a single application. While the addition of each design will increase the cost, this will be cheaper than filing separate applications. It is also possible to register multiple designs in the EU, so long as the designs are intended to be applied to products within the same class of the Locarno Convention.
Can my design be protected by copyright?
Yes, it is possible that elements of your design (or the whole design) may be protected under copyright. For example, the form and decoration of an article may be protected as artistic works. Copyright protection could also attach to the preliminary sketches upon which a design is based.
What can I do with my design right?
A design right is a property right which can be sold, mortgaged or licensed. For the avoidance of future disputes, it is advisable to register any such transactions with the UK Design Registry. We can provide advice and assistance on all matters relating to IP sales, acquisition or licensing.
Thursday 21 October 2010
Wednesday 20 October 2010
Why register your trademark?
Defending your castle
American investor, Warren Buffett famously spoke of successful businesses as, “economic castles with unbreachable moats”. While the castle refers to the product or service being offered, the moat signifies a business’s ability to create a sustainable commercial advantage in a competitive market. Securing your intellectual property is key to defending your product from rival businesses. In a rapidly expanding global market, propelled by the internet, awash with counterfeit products, a company’s trademark is its primary fortification.
A trademark is a logo, image or symbol (or more unusually, a shape, colour or sound) that distinguishes your goods or services from those of your competitors. It not only defines the origin of the goods, denoting quality and accountability, but it creates an image, attracting consumers through its presentation, marketing and advertising. A company is not required to register its trademark, however it is through registration that maximum protection can be effected.
(i) Extending your protection
It is a common misconception that registering your company or domain name prevents others from using that name as a trademark. The only way to guarantee legal exclusivity is to register your trademark. Although it is possible to take action at common-law to prevent a competitor from passing off your unregistered mark as their own, this can be a costly and difficult process. Not only must you prove that good will - in the shape of a strong reputation - is attached to your mark, but you must also show that the misrepresentation is likely to deceive the public.
By registering a trademark the presumption of valid ownership is raised, and all that must be proved is that an identical mark was used without consent for the same goods or services. The unlicensed use of similar marks for similar goods or services will also constitute infringement where it can be shown that there exists a likelihood of confusion on the part of the public. Further protection is afforded where a good reputation can be said to have attached to the RTM (registered trademark). In this case an infringement occurs when a trader takes unfair advantage of the mark, or uses it in a way that is detrimental to its distinctive character.
(ii) Securing your stronghold
Registering your trademark will also minimise the risk of being sued for trademark infringement by a competitor. Under trademark law, registration is a defence to an action for infringement. In the absence of any innocent use defence, using a trademark that has been registered by another business could lead to expensive litigation, forcing you to rebrand your goods or services, thereby losing any associated goodwill amassed to date. RTMs are identifiable by the ® symbol. Since it is an offence to use this symbol for unregistered marks, its presence is likely to act as a strong deterrent for would-be infringers. Moreover having registered your trademark, you will receive notification from the registering office, of applications for similar or identical marks targeting similar market areas. This allows you the opportunity to oppose those applications that, if successful, would threaten the exclusivity of your mark.
(iii) Financial incentives
There are also significant financial incentives to register your trademark. An RTM is a quantifiable asset with a monetary value. It is treated at law as a form of property, and can therefore be bought, sold or licensed for exploitation. By demanding royalties for usage of the RTM under a license, it can serve as a revenue base for the registered owner. RTMs can also be used as a security interest in financial agreements.
Looking at the bigger picture, a business with an RTM, shielded from the risks of lengthy infringement disputes, and confident of the ownership and parameters of its intellectual property, is a business fortified against competitors, and therefore attractive to potential investors and buyers. Registering your trademark is therefore not only a way to safeguard your immediate concerns, but is also a means of protecting your future interests, should you wish to exploit your success through licence agreements, or sell your assets for the value they are truly worth.
Contact us for a trademark registration quote.
American investor, Warren Buffett famously spoke of successful businesses as, “economic castles with unbreachable moats”. While the castle refers to the product or service being offered, the moat signifies a business’s ability to create a sustainable commercial advantage in a competitive market. Securing your intellectual property is key to defending your product from rival businesses. In a rapidly expanding global market, propelled by the internet, awash with counterfeit products, a company’s trademark is its primary fortification.
A trademark is a logo, image or symbol (or more unusually, a shape, colour or sound) that distinguishes your goods or services from those of your competitors. It not only defines the origin of the goods, denoting quality and accountability, but it creates an image, attracting consumers through its presentation, marketing and advertising. A company is not required to register its trademark, however it is through registration that maximum protection can be effected.
(i) Extending your protection
It is a common misconception that registering your company or domain name prevents others from using that name as a trademark. The only way to guarantee legal exclusivity is to register your trademark. Although it is possible to take action at common-law to prevent a competitor from passing off your unregistered mark as their own, this can be a costly and difficult process. Not only must you prove that good will - in the shape of a strong reputation - is attached to your mark, but you must also show that the misrepresentation is likely to deceive the public.
By registering a trademark the presumption of valid ownership is raised, and all that must be proved is that an identical mark was used without consent for the same goods or services. The unlicensed use of similar marks for similar goods or services will also constitute infringement where it can be shown that there exists a likelihood of confusion on the part of the public. Further protection is afforded where a good reputation can be said to have attached to the RTM (registered trademark). In this case an infringement occurs when a trader takes unfair advantage of the mark, or uses it in a way that is detrimental to its distinctive character.
(ii) Securing your stronghold
Registering your trademark will also minimise the risk of being sued for trademark infringement by a competitor. Under trademark law, registration is a defence to an action for infringement. In the absence of any innocent use defence, using a trademark that has been registered by another business could lead to expensive litigation, forcing you to rebrand your goods or services, thereby losing any associated goodwill amassed to date. RTMs are identifiable by the ® symbol. Since it is an offence to use this symbol for unregistered marks, its presence is likely to act as a strong deterrent for would-be infringers. Moreover having registered your trademark, you will receive notification from the registering office, of applications for similar or identical marks targeting similar market areas. This allows you the opportunity to oppose those applications that, if successful, would threaten the exclusivity of your mark.
(iii) Financial incentives
There are also significant financial incentives to register your trademark. An RTM is a quantifiable asset with a monetary value. It is treated at law as a form of property, and can therefore be bought, sold or licensed for exploitation. By demanding royalties for usage of the RTM under a license, it can serve as a revenue base for the registered owner. RTMs can also be used as a security interest in financial agreements.
Looking at the bigger picture, a business with an RTM, shielded from the risks of lengthy infringement disputes, and confident of the ownership and parameters of its intellectual property, is a business fortified against competitors, and therefore attractive to potential investors and buyers. Registering your trademark is therefore not only a way to safeguard your immediate concerns, but is also a means of protecting your future interests, should you wish to exploit your success through licence agreements, or sell your assets for the value they are truly worth.
Contact us for a trademark registration quote.
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