The design registration (DR) system protects the appearance of new products. DR can be used to stop others making, using, selling and importing etc products that are substantially similar in overall visual impression to the registered design.
We’ve emphasised ‘appearance’ and ‘visual’, because design registration cannot be used to stop competitors producing copies of your product if the copies look sufficiently different.
DR is appropriate where the appearance of the new product is commercially important – such as in many consumer items– and/or there is a significant risk of close copying.
Obtaining registration & enforceable rights
Whether a design qualifies for a valid DR is judged against earlier publicly known designs. So, if DR is of interest, it’s important to keep it secret until an application for DR is filed. Otherwise, your design may well be considered unregistrable because it is already publicly known.
Having multiple layers of protection around a new product sends a clear signal to would-be infringers.
Pursuing DR is inexpensive. It involves filing with the Designs Office representations of the design, e.g. photographs or drawings, along with a title identifying the type of product to be covered. The filed information then undergoes a brief formalities check before the design is registered.
Registration typically occurs within a few weeks of filing. The products can and should be marked – and/or marketed and/or labelled – as covered by a DR. This puts would-be infringers on notice. Upon registration, the DR is published in an official journal.
At this stage the DR cannot be enforced, nor can threats of enforcement be made. For this to happen, the DR must first pass examination and be certified. Examination is usually optional but can be requested at any time.
Examination involves the Designs Office comparing the design to earlier designs and considering whether they are substantially similar in overall impression to the registered design. If not, the DR will likely pass examination. On the other hand, if the Designs Office does not consider the design to be sufficiently different from earlier designs, objections will be raised. You then have up to six months to argue the point.
If an examiner’s objections cannot be overcome, the registration will be revoked, so requesting examination carries an element of risk in that the deterrent value of marking your product as covered by a DR may be lost.
Design registration and patent protection are entirely separate systems, although it may often be appropriate for a single product to be covered by both systems. Having multiple layers of protection around a new product sends a clear signal to would-be infringers and is hopefully sufficient to make them steer clear.
Ben Mott, Principal, Mechanical Engineer and Patent Attorney
WADESON
