Design protection is a priority for smaller business

Cheaper registration fees are an opportunity for small businesses and designers to secure greater protection for their intellectual property in future, as well as being a route to protection in the UK post-Brexit.

A registered design is one of the options available from the Intellectual Property Office, alongside trade marking, patenting and copyright.

It protects the visual appearance of a product including the shape, texture, materials, colour and pattern and gives the right to prevent others from using the design for up to 25 years through a renewal process every five years. And since the Intellectual Property Act was introduced two years ago, it has been a criminal offence to copy a registered design intentionally.

The reduction in fees for registered designs sees the cost of a single online application cut by £10 to £50, with bigger savings for multiple applications. An application containing 2-10 designs will cost £70, and each extra block of up to 10 designs an additional £20. The savings are huge for multiple design registrations: as an example, a batch of 40 designs registered online will cost £130 under the new system, compared to £1620 under the old fee rates.

Said Commercial law expert, Gregory Barton of Hart Brown solicitors: “This reduction opens the door to much more affordable protection for small businesses seeking to safeguard their business ideas and designs. They can more easily afford to register different options, such as line drawings, coloured drawings and photographs, which could boost their chances in challenging any copycat competitor.”

He added: “The recent ruling by the Supreme Court, which saw the designer of children’s sit-on suitcase Trunki lose their infringement case against the cheap look-alike Kiddee case, has highlighted the need for a more comprehensive approach to registration of designs”.

The Trunki design was protected with six computer-aided design drawing representations of the exterior of the case from various angles and perspectives. The Supreme Court ruling pointed to the lack of ornamentation on the surface of the Trunki as depicted in the registration, and how this differed from the decoration present on the body of the Kiddee case.

“The Trunki design had been registered under the EU Registered Community Design process, but the outcome of the case translates directly to the UK design registration process,” explained Gregory. “And the lesson is to safeguard your designs with multiple depictions and types of image to give maximum protection.”

The UK process protects designs solely in the UK, so for businesses looking to protect designs in Europe the EU Trade Marks (EUTM) and Registered Community Designs (RCD) will continue to be valid in both the UK and the rest of the EU until Brexit is completed. Post Brexit, UK businesses will still be able to register a Community Design, which will cover all remaining EU Member States, but it will not be valid in the UK.

Also, the government has said it intends to ratify the The Hague System for the International Registration of Industrial Design in a national capacity, to enable continued access for UK designers post Brexit. This allows registration of up to 100 designs in over 65 territories through one single international application.

Gregory added: “In the run-up to Brexit, it’s important that businesses consider their options for both new or existing design registrations, as to whether they need to protect their design in either the UK and Europe, or in both.”

This is not legal advice; it is intended to provide information of general interest about current legal issues.

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Gregory Barton

Solicitor, Commercial & Corporate

Gregory is a Solicitor specialising in commercial & corporate matters. He advises on commercial contracts, with a particular emphasis on the protection and commercialisation of...

Solicitor, Commercial & Corporate

Gregory Barton

Gregory is a Solicitor specialising in commercial & corporate matters.

He advises on commercial contracts, with a particular emphasis on the protection and commercialisation of Intellectual Property and Information Technology.

Gregory also advises on new business ventures, shareholder agreements, partnership agreements, company law and procedure, corporate re-organisations, business acquisitions, sales and mergers, investments and joint ventures.

With extensive experience in the legal industry, Gregory has advised on transactions in a broad range of sectors both within the UK and internationally, including transport and logistics, leisure and tourism, technology, media and telecommunications, IT and software and energy and utilities.

After he qualified as a Chartered Legal Executive in 2014, Gregory completed the Legal Practice Course at the University of Law in Guildford and qualified as a Solicitor in July 2016.

Prior to joining Hart Brown, Gregory worked in the legal department at an international supplier and technology licensor for the petroleum, gas and petrochemical industries where he gained extensive experience in advising on a wide variety of commercial contracts worldwide.

Gregory is known for taking a pragmatic and commercial view on transactions and always keeping his client’s objectives in mind.

In his spare time Gregory enjoys travel and live music.