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“Design patents can be the first line of defence in preventing “knockoffs” by infringers that wish to capitalise on a successful and popular product.” Philip Soo, Patent Counsel, 3M
There is no doubt, when it comes to protecting a new product, patents are the most powerful asset because they protect aspects of the way in which the product works.
However, from the look of a Coke bottle to the icon design for the latest must have app, registered designs, or design patents as they are called in the US, can provide a cheap and quick way to protect the appearance of a range of products and provide an excellent first line of defence.
So what aspects of the way a product looks can be protected by a registered design? Well, they can be used to protect the shape of a product, any decoration on the surface of the product, surface texture or any other aspect of the look of a product.
There are also aspects of designs that can’t be protected. For example, a feature of a product which has to be a certain shape in order to make the product work can’t be protected by a design. For features that help a product work a patent may be more suitable.
Similarly, registered designs also don’t protect products that aren’t visible in use. For example, a car engine. Features of a product that must aesthetically match or connect to other parts, like a body panel for a car repair, are also generally not protectable.
Registered designs are not just limited to physical objects; they can also be used to protect software, in particular graphical user interfaces (GUIs).
For example, an icon for an app or a layout of a software GUI may be eligible for protection with a registered design, as might be other aspects of a user interface.
By obtaining a registered design, you may be able to prevent your competitors from using your app icon. As this may be the first thing a user sees when they come across your app, this sort of protection could be really valuable.
There are a number of requirements placed on registered designs for them to be valid. The basic requirements are that a design must:
● Be new, that is no one has created exactly the same design before. It’s pretty likely that your product passes this first test.
● Have ‘individual character’. This is a tougher test to define. In essence it means that it must not only be different from what’s already known by only immaterial details. In other words, there needs to be some different and slightly distinctive character to the design.
If you’ve got a new design, it’s always worthwhile getting a professional view on whether or not it has individual character.
Conversely, in order to infringe a registered design right, the allegedly infringing design must be one which does not produce a different overall impression on a notional person who is pretty familiar with designs in the field (but who does not notice minute details).
There is a bit of leeway in the designs which you can prevent someone else from using with a registered design, but not much.
In light of this, each time the design of your product changes or is updated, it may be worth considering whether you should file a new, updated design application.
In Europe including the UK, a registered design lasts for 25 years. However, there are some differences in the length a registered design lasts from country to country, generally spanning from 10 to 25 years.
For most products nowadays, that’s plenty of time!
Answer last updated: 17 Jan 2018
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