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At Crate Jacobs we love helping designers.
Whether they are designing furniture, ceramics, the latest toy, bicycles or a public realm sculpture, they are fun to work with (mostly).
But designers are also busy fast-paced creatives. They do not always get their legal ducks in a row. Unfortunately, over the years we have helped designers where they have “missed the boat” and had trouble fully commercialising their designs, or been on the wrong side of a design infringement claim. These can be time consuming and costly lessons.
In this blog we outline a few key issues for designers to be aware of early on. Likewise, if you employ designers within your business or contract with designers this should also be a useful read.
How can designs be protected in the UK?
The primary aim of design law is to prevent others from producing items that replicate or create the same overall impression as the original design.
In the UK, designs can be protected via unregistered design rights and registered design rights. Protection can also be obtained via copyright (but that is a blog for another day!).
UK Unregistered design rights
This is an automatic IP right that protects the shape or configuration of original designs without needing to file an application.
It protects the original design of the shape and configuration of a whole or part of an article. Examples include:-
- furniture shape
- product casing
- mechanical parts
- fashion item structure (but not printed patterns)
On the downside, it does not protect surface decoration, colours, logos or purely functional features. It will last for 15 years from creation or 10 years from the date it was first marketed.
UK registered design rights
Registered design right is a registerable right which protects 2d and 3d objects (the whole or parts), including the appearance, surface pattern, texture, colour, shape etc. Registering a design provides you with a monopoly right to produce and commercialise the design for a period of up to 25 years (5 yearly renewals).
Grace periods (the 12-month ticking time bomb)
You can only obtain the registered design right if your design is novel and not commonplace within the relevant design field.
In practice your own disclosure of your design at a trade fair could destroy the novelty of your design and prevent you from obtaining the valuable registered design right.
But there is some good news…
The UK Intellectual Property Office (UKIPO) understands designers and businesses often need to showcase their designs before spending time and recourses on registering their designs and scaling up production.
Not all products made from designs will fly off the shelves. Designers usually therefore only file design applications for commercially valuable designs which are likely to attract good sales or have licensing potential.
As a result, you will have 12 months from the date you disclose your design to file your application for a registered design. This is referred to as the 12 month “grace period”.
What is a public disclosure?
Public disclosure will include:-
- Showcasing your designs at a design fair or trade show (no matter how small);
- Posting images of your designs on your social media pages (or allowing others to upload images to their social media pages!);
- Allowing trade magazines and academic journals to use your designs in press clippings (a client recently came unstuck where a magazine innocently showcased their product prematurely on a YouTube channel without their knowledge);
- Disclosing your designs to commercial partners and friends and family where you are unable to show the designs where only disclosed under a duty of confidence or under a signed Non-Disclosure Agreement. In the absence of any signed NDA, you should at very least only disclose designs over emails which are clearly headed “Private and strictly confidential”.
Key practical tips for designers
If you’ve read this far, well done. The key takeaways are:
- Always safely retain, date and sign your original design documents (both the drafts drawings, CAD files and any maquettes etc- saving them on a computer and taking date stamped digital photos often do the trick too);
- Ensure you carefully diarise the first date you disclosed your design to the public and 6 months and 9 months after that first disclosure;
- At 6 months you should seriously be thinking about filing an application to register the design (if the products are selling well/ or likely to sell well); and
- At 9 months you should make your final judgement call and get the application filed/ start speaking with a specialist intellectual property solicitor about the process. It can often take a while to get the design drawings finalised and in order, so you want to leave yourself time and avoid unnecessary stress.
What if I miss the 12-month grace period deadline?
It is possible to obtain registered UK design rights outside of the 12-month grace period.
However, all you will have is a relatively worthless design registration certificate. This is because the first thing the lawyers who act for the alleged infringer of your design will do, is research if you disclosed your design more than 12 months prior to it being filed. Where they do find this evidence (that social media post that went viral 4 years ago), they will successfully be able to argue your registration is invalid.
Design protection beyond the UK
Once the UK design application has been filed, we then help our clients obtain design protection in their other key territories by claiming “priority” from the UK application.
This commonly has a 6-month deadline attached to it so getting time is of the essence.
Trade mark protection
Another trick designers often forget about is protecting their brand name (often their own name) with a registered trade mark.
There have been several high-profile disputes over the years and the media recently where trade marks have become incredibly valuable assets (think Estée Lauder v Jo Malone, and the 6 year $1B Halston/JCPenney licensing deal of the 80s).
How Crate Jacobs can help
We pride ourselves on getting to know our designer clients and their long-term commercial objectives so we can provide tailored, pragmatic and cost-effective legal advice.
If you need help protecting or enforcing your design rights, please feel free to contact us for an initial free consultation (info@cratejacobs.com, 01737 339 618).
Daniel Crate
Intellectual Property Solicitor & Founding Partner
Crate Jacobs