Design Protection Rights Solicitors

Where a registered design is in some ways like a trade mark, as another kind of registered right, design right is more like copyright, only it exists only in the specific context of designs for physical articles. In fact, sometimes design rights and copyrights can overlap and there are specific rules of law for dealing with that situation.

At Lupton Fawcett, our team of intellectual property solicitors has over 50 years’ combined experience in this area of law and have helped many individuals and businesses protect their designs. To speak to a solicitor about how you can protect your designs, get in touch with us by calling 0333 323 5292 or fill in the enquiry form on this page and we will get back to you as soon as possible.

What are Design Rights?

A design right is a UK-based right and comes into being in the same way as a copyright, when an original design for an article is recorded. The resulting design right belongs to the designer except where they are produced by an employee in the course of his/her employment or have been produced under an agreement that assigns the rights to another, like a copyright. This protects original design elements that are not inevitable requirements for the article concerned, such as an element dictated by the function of the article or its need to fit together with another article. The design elements protected are elements of the shape or configuration of the article, and not its aesthetic appearance as such – that is dealt with where relevant by registered designs or can sometimes be protected by copyright.

The design right prevents anyone else making an article to the same design, or taking the article made to the design and copying or “reverse engineering” it. It doesn’t protect engineering principles or concepts – if these are novel enough to be protectable, patents would be the appropriate way to do that.

What design right means in practice is that if you have designed an article that is original, meaning it is not entirely commonplace but has some originality in it, and someone else wants to make an article of the same or a similar kind, they have to use their own original design and not copy yours. The right lasts for up to 15 years from the date of the design. Like the other rights discussed here, design rights not only have a value but they can also release value through licensing and other forms of exploitation.

The importance of design right is that it prevents the copying of three-dimensional articles that are not protected as artistic works by copyright or as novel inventions by any patent, but which still represent a business investment in research, development and creativity. Their power and value should not be underestimated, and just as systems and standard contracts should be put in place to protect copyrights, the same goes for design rights.

European Community Unregistered Design Right

One footnote to mention here is that European Community law also provides for an unregistered design right of a different nature, more closely resembling the rights that arise on the registration of a registered design and which protect the look and general impression of an article. This right comes into being automatically if an article is novel, and the rights last for a period of three years. Ignoring the existence of this right is an error commonly made by those who copy articles believing the absence of a registered design leaves the way clear for them to do so. That can be a very expensive mistake.

Registered Designs

When a design for an article that is intended to provide some kind of appeal in itself is novel, in that it creates an impression on an informed user that is different from the impression created by another article. That article can be made the subject of a registered design which can last, when renewed at intervals of five years, for up to 25 years.

The importance of this is that:

  • where an article having a three-dimensional physical aspect (typically a product of some sort) is going to be mass produced it does not attract the protection of copyright except for some artistic works and works of artistic craftsmanship;
  • some aspects of the design will not have design rights in the UK and the European Community Unregistered Design Right lasts only three years;
  • the protection for designs varies country to country and may not be available at all without a registration.

However, the article may well have highly developed and creative design elements that make it new and desirable, and justify protecting it against being copied, even where copyright and other design right protection doesn’t apply. Many designs for items such as articles of clothing, furniture, ornaments and consumer goods – the sort of things in which we think of design as having a definite value – can and should be protected in this way.

Like patents or trademarks, registered designs arise from a registration process, but one that is less complex and exacting than the others. Again, there are classes of goods for which a design can be registered, and there is a test of originality as outlined above: the item must create a different overall impression from that created by other like items. Elements of surface decoration, for instance, a distinctive pattern, can also be registered more generally, and this can provide an additional element of brand protection to that offered by trade mark registrations.

Once registered, the owner can prevent articles being made and sold by others which offer no different overall impression to that offered by the registered design – in other words, copies of the design or articles that are simply intended to exploit the design elements of the original. Like the other rights referred to here, it has its own value as well as offers further value through licensing and other commercial exploitation.

The Team

Our team can advise on both registered and unregistered design law, assist with protection strategies, exploitation by licensing and merchandising and disputes of all kinds. We can also provide guidance on enforcement by court proceedings.

The team’s expertise has been recognised in major independent guides to the legal profession such as Chambers and Partners and the Legal 500. They also have an extensive record of major books and online publications for use by other practitioners, students and academics – giving the advice they give you an authority that sets them apart from the competition.

Relevant publications by team members

Intellectual Property in Designs, by John Sykes (Butterworths LexisNexis).

Valuation and Exploitation of Intellectual Property and Intangible Assets, by John Sykes, co-author. (Emis).

Brands: Law, Practice and Precedents, by Clive Lawrence (Jordans Publishing)

Getting in Touch

Protecting a design requires the assistance of a competent and professional solicitor. The intellectual property team has over 50 years’ combined experience in helping businesses protect their interests. Contact John Sykes or Clive Lawrence using the details on the enquiry form to discuss your requirements. With offices in Leeds, Sheffield and York, we are able to provide advice to those in and around Yorkshire.

Why Choose Lupton Fawcett?

Having advised and supported many local families, individuals and businesses, we are proud to offer clients a dedicated service from specialist solicitors who are experts in their field:

We're Award Winning

We were awarded the Legal 500 HR/Employment Law team of the year in 2017

We're Connected

We're connected to the people, businesses and infrastructure throughout Yorkshire

We Put You First

You can be sure to expect superb client service from us. Our clients are our priority

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Recognised by leading Legal Directories Chambers & Partners and the Legal 500

Frequently Asked Questions

Can I use the trade mark notice ™ on my marketing and advertising materials and packaging even if I have not registered my brands?

Yes.  The trade mark notice ™ indicates that your brand, whether it is a word, series of words, symbol or logo is being used by you as a trade mark and you should use the trade mark notice to maximise your protection.

If I apply for a Community Trade Mark and there is a problem in one country which means that I cannot or do not want to proceed in that country can I still get a registration for the rest of the EU?

No. A Community Trade Mark application is for all or nothing. If you have a problem in one or more member state of the EU you will lose the application and will need to start again by applying in each member state in which you want protection.

If I have sold my branded goods in the EU can I stop them from being resold by one of my customers via particular distribution channels such as discount shops or on eBay?

It depends! Generally it is not possible to prevent how your products are dealt with once they are sold in the EU. If you can show that you have a valid reason for managing your distribution channels and have in place an active distribution channels policy then it may be possible. This is a complicated area of the law and it may be worth you having a conversation with one of our lawyers to explore your options.

If I have already sold my product can I still apply for registered design protection?

Yes you have 12 months from the first sale or marketing of a new product to get registered design protection.

If I have no registered design protection and a competitor is copying my designs can I stop them?

You may be able to stop them if your design is less than 10 years old and is not a commonplace design. This is a complicated area of law and requires careful consideration. John Sykes has just updated his reference book for lawyers on Design Law and John, or one of the team would be happy to advise you.

Be careful because making a threat to a competitor may be grounds for the competitor to bring proceedings against you for “groundless threats”. A threat would include making a complaint to eBay or Amazon to take your competitor’s products off sale.

I have shown my invention to my friends in the pub and they think I should get patent protection for it. Can I get a patent?

Not unless:

  • your friends were bound by terms of confidentiality because you cannot get patent protection for an invention which has been disclosed AND
  • your invention is new AND
  • your invention is capable of industrial application

If you want to show your ideas to third parties whether friends or potential customers or manufacturers you MUST HAVE A CONFIDENTIALITY AGREEMENT in place.  If the answers to the above questions are all “yes” then speak to us about getting patent protection.

I told my friend to keep my idea for an invention secret. I think he is working on building a business to exploit it. Can I stop him?

Only if you have a patent application in place which successfully proceeds to grant or he has copied an original material work you created or own. So, for example, if you built a prototype or created drawings of your invention and your friend has copied these.

You could issue proceedings for breach of confidence but this is a difficult claim to bring if there is only your word against his and he may not be “good for the money” and/or you do not want to spend the monies required on legal action to get an injunction and any other legal remedies to which you may be entitled.

Get In Touch Today!

Get In Touch Today!

Please complete this form to make an enquiry and we will get back to you as soon as we can.

Remember you can still call us on 0333 323 5292 or email us at law@luptonfawcett.law

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