UK: New Registered Design Law in Place from Today

Last Updated: 10 December 2001

The UK has finally implemented the Designs Directive. The new regulations made under the Directive - The Registered Designs Regulations 2001 – have their first working day in force today. In order to accommodate the Directive's intended harmonisation of design laws across the Community, the process of registration of designs in the UK has had to change in some significant ways:

1. Worldwide novelty requirements

To be registrable, a design will now have to be novel worldwide (rather than just in the UK) i.e. it cannot be the same as any disclosed design anywhere in the world. However, prior disclosures that the applicant can prove are too obscure to be known to any designer in the relevant field can be ignored. An example given by the Patent Office is that of a jewellery designer's design not being refused because, quite by chance, it was found to be the same as some jewellery in a remote museum.

2. "Individual Character" required

This is a completely new test. The design must not just be different from other designs its must be significantly different from them in the eyes of the "informed user" - not a skilled design expert but rather a regular user of the products in question. As the Patent Office explains in its guidance, if "the product produces the notion of "déjà vu", it will fail as being too similar to another item and thereby lack individual character".

3. No requirement for the application of the design to an article or for industrial manufacture

The old law only allowed registrations where a design was applied to an "article" and the registration was specific to that particular article. Now the design itself will be protected, whatever the article to which it is applied. Under the old law there was also a requirement for the design to be applied to an article of manufacture or by an industrial process. Such considerations will now no longer be relevant.

Of particular interest to people engaged in the field of IT is the possibility of registration of icons appearing on a computer screen, the Regulations expressly providing for the registration of "graphic symbols" and "typographic typefaces". A design registration will provide protection without the need to show copying (in contrast to the position in copyright).

4. Protection affordable to parts of products

Under the old law only an element of a product with an "independent life of its own" could be registrable as a design. Now however component parts are registrable as long as they are ordinarily in view when in use.

5. 12 month "grace period"

Whereas previously any disclosure of the design outside a certified exhibition prior to filing an application for registration would fall foul of the novelty requirements, under the new Regulations designers will have a 12 month grace period from the date of first disclosure in which to apply for registration. In this way designers can exhibit and market their new design to assess its potential before they have to commit to registration. However, if, not acting upon the first designer's disclosure, another person shows the same or similar design which he created independently before the first has made his application, that third party's disclosure will prevent the first's registration even if the former's application was inside the 12 month period. It would therefore appear that registrations should be made as soon as possible under the new regime as under the old.

The possibility of registering icons appearing on a computer screen (at least insofar as they formed part of a preloaded computer operating system) has already been somewhat anticipated by the recent decision of Jacob J in Apple Computer Incorporated v Design Registry (24th October 2001, unreported). In this case Jacob J. allowed Apple Computer's appeal from the Design Registrar's decision not to allow a registration for such icons. The judge did not apply the Directive directly but nevertheless concluded that the design of Apple's icons was registrable by reasoning that the "article" in question was the computer screen and the icon designs were "designs applied by an industrial process" having been built into the software as part of the process of manufacture of the computer. In adopting this reasoning the judge asserted that where the new directive clearly envisaged that such a design might be registrable, then it should be.

"© Herbert Smith 2002

The content of this article does not constitute legal advice and should not be relied on as such. Specific advice should be sought about your specific circumstances.

For more information on this or other Herbert Smith publications, please email us."

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