UK Registered Designs

Question 1

How can a design be registered (UK)

Answer 1

S1 RDA - (1)by making an application
Using FORM + FEE
up to 12 view of single design
multiple can be applied for at same time, subsequent fees being reduced

Question 2

What does design mean for UKRD

Answer 2

S1 RDA (2)
APPEARANCE of the WHOLE or a PART of a PRODUCT
arising from features like lines, contours, colours, shape, texture, or materials of the product or its ornamentation

Question 3

What is a product under UKRD

Answer 3

S1 RDA (3)
any industrial or handicraft item (not a computer program), including packaging, get-up, graphic symbols, typefaces, and parts for assembly into a complex product;

Question 4

What are the requirements for a design to be registerable in the UK

Answer 4

S1B RDA
(1) to the extend that it is
(2) novel
(3) has individual character
(4) taking into account the DEGREE OF FREEDOM available in creating the design

(8) if part of a COMPLEX PRODUCT assessed as what is VISIBLE during NORMAL USE

Question 5

What does novel mean for a UK registered design

Answer 5

S1B RDA (2)
it differs from prior art designs by MORE THAN IMMATERIAL DETAILS

Question 6

What does individual character mean for a UK registered design

Answer 6

S1B RDA (3)
its OVERALL IMPRESSION on an INFORMED USER differs from the overall impression of any prior art design

Question 7

What does normal use mean for a part to be registerable UK

Answer 7

S1B RDA (9)
in use by the end user, but not any maintenance, servicing, or repair work.

Question 8

What is prior art for a UKRD

Answer 8

It is NOT absolute
S1B RDA
(5) includes any public dissemination before priority/ application date i.e. existing published designs registered in different categories, and registered (not published) UKRD and EU CRD
(6) but excludes
- materials that could not reasonably have become known to UK or EEA businesses in the relevant SPECIALIST SECTOR
-things disclosed in confidence
- things disclosed by the designer or by anyone GIVEN, ENTITLED TO, or ABUSING information from the designer WITHIN 12 MONTHS prior to the application or priority date

Question 9

Who is the informed user

Answer 9

someone experienced with the products in question - more like skilled person than average consumer

Question 10

What are the statutory exclusions for UKRD

Answer 10

S1C RDA
(1) features solely dictated by technical function
(2) “must fit” features

S1D RDA
things contrary to public policy or morality

Question 11

What does the must fit exclusion mean

Answer 11

S1C RDA
(2) features required in order to connect to or fit to another product SO THAT either may perform its function
(3) except in the case of features enabling mutually interchangeable systems (modular)

Question 12

What are different jurisdiction grace periods for designs

Answer 12

12M - UK, EP, JP and US
6M - AU, IN, KR

CN limited 6M for certain approved disclosures or breach of confidence disclosures

Most have requirement that application is filed in time, not priority application

Question 13

Who is the author of a UKRD

Answer 13

S2 RDA
(1) the original proprietor, UNLESS
(1B) it was created by an employee in the course of their employment, when it it the employer
(2) can be assigned to or shared with another part who is treated like original proprietor

Question 14

Who is the author of a computer generated design

Answer 14

S2 RDA (4)

the person making the arrangements necessary to give rise to the design

Question 15

Who is the owner of a commissioned design UKRD

Answer 15

the author by default, not the commissioner, unless there is an agreement to the contrary

Question 16

What happens if an UK unregistered design right exists in the design to be registered UKRD

Answer 16

S3 RDA (3)
that design must be registered by the unregistered design right owner

Question 17

What happens if you fail to complete a UKRD application

Answer 17

S3 RDA (4)
will eventually result in it being abandoned

Question 18

What is classed as the date for a UK design registration

Answer 18

S3C RDA
(1) the date on which the UK application was deemed to be made BUT
(2) if the effective date for the purpose of evaluating prior art is earlier then
(3) a) if due to priority, date is still application date
b) if due to splitting an initial UK application, or validly amending to satisfy registration requirements, date is date of initial application.

Question 19

How many UK design applications can be applied for at once

Answer 19

up to 50

Question 20

What rights are given to a proprietor by registration of a UK design

Answer 20

S7 RDA (1)(3)
they are entitled to exclusive use of the design AND any design that does not produce a different overall impression on the informed user

Question 21

What does use mean for a UKRD

Answer 21

S7 RDA (2)
making, offering, putting on the market, importing, exporting, or using a product incorporating the design or to which it is applied, or stocking the product for any of these purposes

Question 22

Are rights in registered UK designs subject to any limitation

Answer 22

S7 RDA (4)
they are subject to limitation by the registrar or courts relating to partial invalidity, or any partial disclaimer in the application

Question 23

What is classified as infringement of a UKRD

Answer 23

S7A RDA (1)
Any UNAUTHORISED ACT (i.e. use)

Question 24

Are there any exceptions for UKRD infringement

Answer 24

S7A RDA (2)
a) private non-commercial use
b) experimental purposes
c) reproduction for making citations, or teaching purposes PROVIDING source is mentioned and act does not unfairly prejudice normal exploitation of the design
d) foreign ships / aircraft temporarily in the UK
e) importation of spare parts for such ships/ aircraft
f) repair of such ships/ aircraft

Question 25

When does exhaustion of rights apply for a UKRD

Answer 25

S7A RDA (4)
once a product has been put on the market in the UK or EEA with proprietors consent (i.e. if sold by proprietor in France, it can be imported into the UK)

Question 26

What is not infringement of a design of a product which is part of a complex product

Answer 26

S7A RDA (5)
it is not an infringement to use that part in repairs to restore the original appearance of the complex product.

Question 27

When does infringement of a design back date to

Answer 27

S7A RDA (6)
only to the date on which the certificate of registration is GRANTED

Question 28

What is the test for infringement of a design

Answer 28

Same as test for novelty and individual character
Basis of OVERALL APPEARENCE, and for the informed user to weigh the SIMMILATITIES AND DIFFERENCES

Question 29

Is there a prior use defence for UKRD

Answer 29

S7B RDA (1)
Before the application date (or priority), good faith use or serious and effective preparations to do so may CONTINUE to use the design for the purposes for which, before that date, the person had used it or made the preparations to use it.

Question 30

Are there any situations when prior use of a registered design cannot continue?

Answer 30

S7B RDA (3)
Does not apply if design was COPIED from the subsequently registered design

Question 31

How can you show your design is registered

Answer 31

Similarly to patents, by giving registration number/ link to register with any product.

Can limit scope for accidental infringement defence

Question 32

What happens if someone intentionally copies a UK registered (or pre Brexit EU Community design)

Answer 32

It is a CRIMINAL OFFENSE to copy in order to make a product whilst knowing the design was registered but not obtaining consent

Also criminal offence to offer, put on the market, import export or use such a product or stock it for such purposes.

Question 33

Is there a defence for intentionally copying a UKRD

Answer 33

can show a reasonable belief that the registration of the design was invalid or that the person did not infringe a registered design.

Question 34

How long does a UKRD last

Answer 34

S8 RDA (1)(2)(3)
rights last FIVE YEARS from date of REGISTRATION

renewable up to FOUR TIMES (to a total of 25 YEARS)

Question 35

How do you renew a UKRD

Answer 35

S8 RDA
pay renewal fees before expiry of current period
(4) there is a SIX MONTH GRACE PERIOD to pay fee and penalty fee

Question 36

What happens if you pay a UKRD fee in the grace period

Answer 36

S8 RDA (4)
a) anything done to or with the rights in the meantime is valid
b)c) any infringement or crown use is treated as such

Question 37

Can you restore a lapsed right in a UKRD

Answer 37

S8A RDA
(1) where right has expired due to lack of payment of renewal fee an application to restore may be made within 12 MONTHS of the expiry (6M post end of grace peirod)
(2) application should be made by registered proprietor, or entitled person, or one of joint applicants

(4) failure must be UNINTENTIONAL, and if registrar is satisfied shall be restored with FEE

Question 38

What rights may accrue while a design has lapsed and is then restored

Answer 38

third party rights accrue in GOOD FAITH ACTS

Question 39

What are the grounds for invalidity of a UKRD

Answer 39

S11ZA RDA
(1) a) design is not a “design” within the meaning of the act
b) it is not novel, does not have individual character, or is excluded
c) is anything else listed in Schedule 1A

(1B)(1B)) it is not registerable over another design applied for before but published after the design

(2) registered proprietor was not entitled, and true owner objects

(3) design incorporates an earlier distinctive sign and the rights holder objects (e.g. a TM)

(4) design incorporates copyright material and the rights holder objects

Question 40

What are the exclusions for designs in Schedule 1A

Answer 40

protected insignia e.g. royal arms, national flags of PC states, Olympic symbol, symbols of intergovernmental organisations
use without consent

Question 41

Can you claim priority for a UKRD or from a design

Answer 41

S14 RDA
(1) within SIX MONTHS of filing in a convention country, you can file an application in the UK claiming priority

Question 42

Can UKRD be extended to any other states

Answer 42

Some scope to extend directly to some Commonwealth countries

Question 43

Are there international design applications

Answer 43

Yes via the Hauge agreement, a single international application can be filed with the IB, covering more than 80 states, where you can designate UK and EU separately