DEREK JACKSON ASSOCIATES

PATENT AND TRADE MARK ATTORNEYS

COMMUNITY REGISTERED DESIGNS

A design can be registered throughout the European Community for the external appearance of all or part of a product which results from the lines, contours, colours, shape, texture or materials of the product or its ornamentation.

To be registrable a design must be new and have individual character.  To be new a design must not be the same as any design that has been made available to the public.  Individual character means that the design must produce an overall impression which differs from the impression resulting from any design which has already been made available to the public.

Designs cannot be registered which are concerned only with how a product works or for parts of complex products that are not visible in normal use.

 A 12 month period of grace allows designers to test the market or seek financial backing before filing an application for registration.  Nevertheless, an application for registration must be filed within 12 months of the earliest public disclosure of the design.

It is important to note that if any third party shows the same or a similar design which has been created independently, prior to the designer's application date, then this other disclosure can prevent registration even if it was made during the grace period.  Designers are therefore advised to apply for registration as soon as possible and not to rely on the grace period if this can be avoided.

Registration of a design creates a monopoly providing the owner with exclusive rights to the design while the registration is in force.  A registered design protects that design against subsequent imitations, whether intentional or not.  Registration is initially effective for a period of five years, but can be renewed for up to four subsequent periods of five years, giving a maximum of 25 years.

ADVANTAGES AND DISADVANTAGES

The differences between a Community registered design and a UK registered design lie in the cost and the territory covered.  On the one hand, a Community registered design covers 27 countries, whereas a UK registered design covers only one.  On the other hand, a Community registered design is more costly (although certainly not 25 times more costly) than a UK registered design.

When compared with unregistered design right, a registered design gives protection against subsequent imitations whether or not they are copies, while for unregistered design right copying has to be proven.  Unregistered design right protection is also relatively short-lived compared with registered design protection.