Registered Designs as a Commercial Tool

M4 Innovation Network9 July 2010

Adrian BradleyCleveland

a.bradley@cleveland-ip.comuk.linkedin.com/in/adrianbradley Twitter: adrianpatent

Intellectual Property Rights

• "the No. 1 strategic reserve in the 21st century"

• "significance is not inferior to any other strategic reserve, be it food or energy."

Niu Wenyuan, chief scientist for China's Academy of Sciences

Consider Registering Your Design If…

• …what you produce is judged by the consumer on appearance.

• …you have invested time, effort and/or money in making your product visually appealing.

• …you believe that the way your product looks confers a commercial advantage.

Can Complete the Intellectual Property Picture

Patents

TradeMarks

DesignRight

Copyright

Registered Designs

Registered vs Unregistered

Registered UnregisteredNeed to Apply AutomaticCosts Money FreeMonopoly Right Copying RightLonger duration Shorter DurationExistence – Public Needs to be

shown

Community Design

• Covers all EU member states (27 countries).

• Single application.• Can cover multiple designs.• €350 for one design.• Formalities examination only.

Some Examples

Typical Industrial Products

Community Design000017009-0001 TELEFONICA, S.A.

Packaging

Community Design000261003-0001 Mars, Incorporated

Sets of Articles

Community Design000465679-0016 Willis Gambier Ltd

Parts of Products

Community Designs000041173-0003 and000041173-0004Inquam (UK) Limited

Logos

Community Design Number 000332192-0001 The British Broadcasting Corporation

Computer Icons

Community Design Number 000028428-0028 VODAFONE GROUP PLC

Typefaces

Community Design Number 000077029-0001 Caudrelier, Valérie

Web Page Layout

Community Design000529672-0001 Nominet UK

Ornamentation – Applicable to Many Articles

Community Design000250881-0001 UAB "KAVINUKAS"

Excluded from Protection

• Design not reflecting the outward appearance of an item.

• Not industrial/handicraft item.• Appearance exclusively dictated

by technical function.• Against morality or public policy.

Design not reflecting the outward appearance of an

item

Not industrial/handicraft item

Appearance exclusively dictated by technical function

Community Design000273644-0001 Zakład Produkcyjno

Against morality or public policy

Requirements for Registration

• Design must be novel (no identical design made available to public).

• Must have individual character (creates a different overall impression on the informed user).

Lack of Novelty

Prior Design RCD 5269

Lack of Distinctive Character

Prior Design RCD 225073

When to Apply

• If you want to register a Community Design you must do it within 12 months of first disclosure.

• Within 6 months of filing a design in another country (“claiming priority”).

Examination

• Formal examination only. • If no objections, proceeds to

registration in a few weeks.• Publication occurs after

registration• Invalidity requests can be filed by

third parties after registration.

What You Get

• An exclusive right to prevent third party from using design.

• or a design which does not give a different overall impression to an informed user.

Benefits

• Publication – keep off the grass.• Registered right – easier to verify

existence.• Monopoly right – no need to prove

copying.• Quick.• (Relatively) cheap.

Exploitation

• Designs provide a barrier to entry – gives breathing space to build a brand.

• Licensing design (e.g. overseas) can provide revenue stream.

• The design can be used as security for e.g. a loan.

• The design can be sold.• Builds a reputation for innovation.

Ownership of Rights

• Right in designs vests in the designer in the first instance.

• If made by employee as part of his duties, the rights pass to the employer.

• Commissioned designs – make sure rights are dealt with in contract.

Other Jurisdictions

• UK National system – provisions similar; cheaper (£60).

• Hague Agreement – centralised system covering several different countries.

What’s the Other Guy Got?

• Your design registrations do not mean you are free to use your design.

• You may be infringing someone else’s.

• Freedom-to-operate requires specialist searching.

• How much are you investing in this?• Is a head-in-the-sand attitude

appropriate?

Do You Need Professional Advice?

• For filing - no.• Advisor will ensure protection is

optimal.• Many clients file own applications,

and use advisor for tricky matters.• Patent Attorney/Trade Mark

Attorney/Solicitor first port of call.

Sources of Information

• http://www.ipo.gov.uk/types/design.htm

• http://oami.europa.eu/ows/rw/pages/RCD/index.en.do

• http://www.cipa.org.uk/pages/advice-basic_designs

• http://www.itma.org.uk/designs