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COUNTRY : UNITED KINGDOM OF GREAT BRITAIN & NORTHERN IRELAND
CAPITAL : LONDON
LANGUAGE : ENGLISH
MEMBER : EUROPEAN UNION COMMUNITY DESIGN, BERNE CONVENTION, WIPO, WTO-TRIPS, PCT, PARIS CONVENTION, G 8, G20, COUNCIL OF EURPOE, OECD, WTO, COMMONWEALTH OF NATION
Protection to Design is provided at a two tier level in United Kingdom:
- NATIONAL REGISTRATION
Direct Filing with National Patent & Trademark office
- EUROPEAN UNION COMMUNITY DESIGN
Kindly refer Treaties for the Community Design Registration.
APPLICANTS WHO MAY APPLY FOR INDUSTRIAL DESIGN PROTECTION:
Following can file Design Applications:
a). Author of the Design
b). Employer of the author if Design made during course of employment
c). Person contracting the author to make the design
d). Person to whom the author has assigned the design in writing.
Two or more persons owning interests in the design must apply jointly.
REQUISITES FOR FILING INDUSTRIAL DESIGN APPLICATIONS:
- Copy of the drawings;( six views such as front, rear, left side, right side, top plan and bottom plan views. And additional drawings such as perspective and cross-sectional views also may be submitted) – photographs in jpg format
- The full name and address of each creator;
- The full name and address of each applicant;
- The name of article to which the design is applied;
- The filing date, application number and country of the priority application; and • The priority document
- Statement of Novelty in respect of the articles to which industrial design is applied to. However, not required while registering wallpaper, lace or textile articles.
- Full payment of fees.
Statement of Novelty: Novelty refers to originality, something new or unusual. In this context, if the Controller General so deems necessary, may direct the applicant to endorse the application and the representations with a brief statement of novelty that he claims over the designs so submitted for registration.
Prior Disclosure destroys novelty of the Design so extreme care has to be taken to maintain secrecy of the Design. However, in United Kingdom, applicant can file the application within 12 months after disclosure which will still retain novelty.
TYPES OF INDUSTRIAL DESIGN APPLICATIONS UNITED KINGDOM:
An ordinary application does not claim priority.
Convention application claiming priority .
A convention application claims priority of an application filed previously in a convention country. (Deadline for claiming priority for a design application in the UK is 6 months from the filing date of the priority application) Kinds of Designs Rights:
There are 2 ways of obtaining designs rights in the UK which are:
i. Unregistered Designs Rights
– which is automatic the moment a design is created.
ii. Registered Designs Rights
– which is by way of the application process.
i. Unregistered Designs Rights:
In the UK, design rights are acquired the moment a design is created despite it not being registered. Taking the following precautions help in preventing infringement of the design:
A note recording the date:
– when the design was created.
– when articles bearing the design were made available for sale, hire.
– when disclosure regarding designs was first made.
– depositing a sample or a copy of the design drawings with a bank or a solicitor.
Term of Protection of unregistered design rights:
Unregistered designs are protected for 15 yrs. from the end of the calendar year in which design was first recorded or incorporated into an article.
10 yrs. from the end of the calendar year in which articles made from the design were made available for sale / hire anywhere in the world.
Rights of the unregistered Designs Owner:
Owners of unregistered designs rights are given the exclusive right against copying of the designs by others without prior consent.
Designs protected by unregistered design rights:
– Designs that are original
– Designs not copied from an existing design
– Designs that are not common place
Designs not protected by unregistered design rights:
– Designs that are commonplace, everyday or ordinary
– Designs having features enabling one product to be functionally fitted or aesthetically matched to another.
Aspects of unregistered designs protected:
– Any aspect of the shape of the design.
– Any configuration of the whole or part of the article.
Aspects of unregistered designs not protected:
– Surface ornamentation and other 2 Dimensional aspects of the design.
– The article itself.
Enforcement of unregistered design rights:
To enforce unregistered design rights, proof stating that design was intentionally copied by the infringer or that there existed potential for copying the design is required.
Coverage provided to unregistered designs:
Protection is provided to unregistered designs only in a limited number of territories.
EUROPEAN UNION COMMUNITY DESIGN
Kindly refer our guide under the Community Design Registration.
KINDS OF INDUSTRIAL DESIGNS REGISTRABLE:
To come under the scope of registration, a Design should:
- Be new and / or original
- Not have been disclosed to the public anywhere by publication in tangible form or by use in any other way prior to the filing date or where applicable, the priority date of the application for registration to which a 12 month exception is provided.
- Be significantly distinguishable from known designs or combination of known designs.
- Not contain scandalous or obscene matter, or be contrary to public order or morality.
- Not be a mere mechanical contrivance. vi. Be applicable to an article, should appeal to the eye.Original here means, originating from the author of such a design and includes those cases which though old in themselves , are new in their application as well.
Aspects of Designs registrable:
- Two Dimensional, Three Dimensional, general appearance of a design.
- Overall visual appearance of the product
- Lines, contours, colours, shapes, texture, materials of the products, ornamentation
- Pattern, get-up, packaging, graphic symbols, typographic typefaces, parts of a product intended to be assembled into a more complex product.
KINDS OF INDUSTRIAL DESIGNS NOT REGISTRABLE:
- A drawing or a model contrary to public order or morality.
- Not a design by legal definition
- Designs that are offensive
Designs that consist of or include protected flags and international emblems • Designs solely dictated by the product’s technical functionSearch & Filing:
Conducting a search prior to filing the design application is always advised to rule out conflict with prior registered marks.Our Attorneys will assist you in search, filing and protection of Designs applications in the United Kingdom.
STEPS TO INDUSTRIAL DESIGN REGISTRATION:
- Finding out whether such a design has been registered previously.
- Preparing a representation of the design
- Identifying the class of design.
- Providing a statement of novelty.
- Including a disclaimer that the design has not been in the public domain at any point in time.
- Claiming a priority date if the design Is registered in other countries.
- Determining the fee to be paid.
- Ensuring all enclosures are attached.
- Complying with objections if any.
- Providing full details pertaining to contacts and addresses.
EXAMINATION PROCESS OF INDUSTRIAL DESIGNS:
Upon receipt of the design application, it is numbered and dated and is given a formalities examination followed by substantive examination.
In the event examiner has any objections concerning the application, applicant has to rectify or overcome the objections within a stipulated time.
PUBLICATION AND REGISTRATION OF INDUSTRIAL DESIGNS:
Once the examiner is satisfied that the application is in order and meets all the requirements, it is registered and a certificate of registration issued to the applicant.
Registered designs along with the relevant details are then published in the electronic designs journal.
Opposition: Objection by 3rd parties can be by way of rectification, invalidation or cancellation of the registered designs.
Our attorneys will help you with rectification, invalidation and cancellation proceedings.
TERM OF INDUSTRIAL DESIGN PROTECTION:
Protection to the design is initially given for 5 yrs, renewable 4 consecutive 5 yr. Periods totalling to 25 yrs in all.
Renewals & Maintenance:
Renewals have to be requested during the final 6 months of the registration validity period.
If a renewal application is submitted after this period (but no longer than 6 months later), an additional fee is payable.
Our attorneys will assist you with renewals and maintenance.
Coverage: Designs are offered extendible protection covering a wide number of territories.
BENEFITS OF INDUSTRIAL DESIGN REGISTRATION:
WHY PROTECT DESIGNS IN UNITED KINGDOM? Patent law deals in ‘behind the scenes’ aspects of a company or organization as it deals with inventions that are not easily accessible by the general public. Designs along with Trademarks on the other hand, are the ‘visual medium’ which aid in brand projection, recognition, association and retention by existing and potential customers. To prevent rivals from copying industrial designs, it is therefore an important and strategic aspect in the protection of intellectual property rights. Therefore, as with all IP, it is better to begin protection of designs at the earliest before disclosure with the general public.
BENEFITS OF INDUSTRIAL DESIGN REGISTRATION IN UNITED KINGDOM: Certain countries that follow cumulative protection of Industrial Designs by Copyright as well as Design laws have the ‘Unity of Art’ principle that needs to be followed meaning, entitlement to copyright for applied and other art work shall be determined through the same criteria. In today’s highly impulse driven and temperament market, industrial designs provide the requisite edge to push products into consumers’ psyche. Such is he craving for fashionable and well crafted products that looks can often be equally or more important that the products’ functionality itself.
Registration of Industrial Design Rights becomes a valuable asset which gives the following benefits:
- A substantial return on interest (ROI) as the popularity of the product is directly proportional to its reproduction and counterfeiting thus enabling swift legal action in preventing copycats and frauds thereby ensuring that the design is not diluted.
- Infringement of designs can help owners obtain damages and recover costs for the same.
- Registration of designs can help owners work on bettering their designs through Research and Development (R&D) on bringing out superior industrial designs thus making it harder to knock off or scale up manufacturing by infringers in order to copy the original designs.
- Registered designs can be sold, licensed, franchised which can all earn royalty. The same can also be used as a collateral to secure loans.
- Industrial Designs complement even strengthen Trademarks hence making brand attention, brand association and retention, brand recall and usage much easier and interesting.