‘Academic’ Intelligence: An Overview of Registered Design, Part One

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Today’s article shall endeavour to present a brief account of the criteria that need to be satisfied for a design to be protected by registered design right.

To begin with, it is worth noting that, unlike copyright, registered design is a ‘monopoly right’; as seen by s. 7 (1) Registered Design Act 1949 (‘RDA’), once a registered design right has been granted, its proprietor has got the exclusive right to ‘“use the design and any design which does not produce on the informed user a different overall impression”.

The significance of the above mirrors the one discussed in my second article on trademarks; namely, it denotes that the right can be easily enforced against third parties in infringement proceedings as the proprietor need not prove ‘subsistence’ so long as the design has been registered on the register.

As with other intellectual property rights, a registered design right can be both assigned and licensed out to third parties; in order to be valid, assignments and licenses need to be in writing and registered on the register (ss. 19 and 33 RDA).

‘Design’ is itself defined in s. 1(2) RDA as "the appearance of the whole or a part

of a product resulting from the features of, in particular, the lines, contours,

colours, shape, texture or materials of the product or its ornamentation."

The requirements for registration are outlined in ss. 1- 1B RDA; those will be looked at in turn.

There needs to be a ‘product’ (s.1 (3) RDA)

As outlined by s.1 (3) RDA, ‘product’ is defined quite widely and includes both handicraft and industrial items. Nevertheless, it must be born in mind that ‘simple parts’ comprising a more ‘complex product’ can only be registered if they remain visible during normal use by the end user (s. 1B (8) (a) RDA). As an example, parts of the engine of a car are unlikely to satisfy the above criteria as they do not remain visible to the naked eye when driving.

The design must be ‘new’ (s. 1B (2) RDA)

There must be no identical design available to the public before the relevant date. ‘Public’ is defined in s.1B (5) RDA and is quite broad whilst the ‘relevant date’ is defined in s. 1B (7) RDA as being the date of the application to register the design.

Note that, if the design has, in fact, been made available to the public prior the relevant date, the proprietor will still have twelve months (known as a ‘grace period) in which he would be able to register the design under RDA (ss. 1B(6)(c) and (d) RDA).

It must, however, be noted that, during that period, the design would not be protected by a registered design right and the proprietor would not, thus, have the benefit of the ‘monopoly’ right. Instead, he would have to rely on weaker intellectual property rights such as confidentiality and unregistered design right which he would need to establish subsistence in, should he decide to pursue infringement proceedings against a third party.

The design must have an ‘individual character’ (s. 1B (2) RDA)

Section 1B (3) RDA denotes that the design must not give the informed user a ‘sense of déjà vu’. The informed user is considered to be a regular buyer or consumer who has become familiar with the product through use, either in his personal or professional capacity. Put simply, the design in question must not ‘remind’ the informed user of a design that he had encountered before.

It must be noted that there are several exceptions to the above requirements which will not qualify for registration, namely:

Designs “solely dictated by the product’s technical function” (s. 1C(1) RDA)

An example of the above would be the shape of most glass frames as they are designed in a way to fit around the ears. Note that s. 1C (1) RDA specifically states that that will not prevent the remainder of the design from being registrable. If, for instance, there is a registrable colour- pattern on the actual frame, it might still be registered as a design right.

‘Must- fit’ Exception (s. 1C (2) RDA)

If the shape of a design/ product is such as to allow for it to fit with the rest of the product (or another design/ product) it will not be registrable.

As an example, most products used to ‘attach’ lamps, etc. to various surfaces are likely to fall foul of the above.

Contrary to Public Policy or Morality (s. 1D RDA)

Designs contrary to public policy or morality will not be registered.

To conclude, if you want to protect a design, the most efficient and safe manner of doing is by filing in an application to register it as a registered design.

As it will be demonstrated in next week’s article, being able to rely on a monopoly right is incredibly beneficial in a pursuing a claim against an infringer.