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British and European Patent and Trade Mark Attorneys

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Subscribe to this list via RSS Blog posts tagged in registered design

In the wake of the UK Supreme Court's Trunki decision, designers may now be questioning the value of registered designs to protect their products in the UK.  However, during a panel discussion at the ITMA designs seminar on 27 April 2016, Mark Vanhegan QC and Michael Hicks (who represented the parties in the case), and Nathan Abraham of the IPO pointed out that design registration still represents good value for money and gave the audience some practical tips on how to secure valid protection.

Advantages of design registration:

•Relatively cheap

•2D designs can be protected 

•Provides an absolute monopoly (there is no need to prove copying)

•There is a grace period, which could be useful if there has been accidental disclosure before registering

One point to note is that many registered design cases are settled before ever making it to court so we do not hear about them.  This demonstrates that registered designs can still be useful in providing protection.

Practical Tips:

Different types of representation provide different scopes of protection and therefore cover different designs.  Each design can include several representations, but these should therefore all be of the same type.  We would recommend, for each product, filing at least three sets of representation: line drawings (to provide broad protection for the overall shape), black and white photos or CAD designs (not limited to particular colours, but protects different tones to the product), and full colour photographs (to protect the specific product itself).  By filing a series of different representations with a range of level of detail, one would hope that at least one would be both valid and infringed if tested.  An example of what might have helped in the Trunki case can be found below:

b2ap3_thumbnail_recommended-reps.png

 

The United States of America and Japan have joined the Hague System for the International Registration of Industrial Designs, a system that provides a cost-effective way of registering industrial designs in 64 countries.

 

The Hague System allows a single application to be filed centrally and registered in the 64 countries which now include USA, Japan and the EU.

 

An international registration produces the same effect of a grant of protection in each of the designated countries as if the design had been registered directly with each national office, unless protection is refused by the national office.  Registered design protection varies from country to country and can last from 15 to 25 or more years.  The Hague System comes into effect in USA on 13 May 2015.  For more information on protecting your designs, please contact us.