Date post: | 27-May-2015 |
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Registered Designs as a Commercial Tool
M4 Innovation Network9 July 2010
Adrian BradleyCleveland
[email protected]/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