Understanding Your Design

The look of a product you have designed such as its physical shape, pattern and colours, can be protected to stop its replication.  It is worth noting that designs only protect the appearance of the product, not the idea or concept behind it, or how the product works.   In other words, “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

There are two main forms of designs in Ireland– unregistered and registered.  In contrast to registered designs, unregistered designs only protect from copying, not independent creation.  The enforcement of registered designs is therefore typically more straightforward than for unregistered designs.

Unregistered Designs

Unregistered Community design comes into existence automatically if it is new and has individual character at the time of its creation.  By individual character is meant lack of déjà vu from the point of view of an informed user of the product to which the design is applied.  Unregistered Community design is an EU wide right but has a very short duration – 3 years from first disclosure in the EU.  This is the only unregistered design right available to Irish designers.  It is often relied on by fashion designers.  Karen Millen successfully argued Dunnes Stores copied a number of their unregistered design rights in black knit top and striped shirts in 2014.

In the UK there is an additional unregistered design.  UK unregistered design right used to be available to all members of the EEC but since Brexit this is no longer the case.  Design right can protect a design for a maximum of 15 years.  It comes into existence automatically if it is not commonplace in the design field in question at the time of its creation.  In contrast to unregistered community design, design right also subsists in internal features and purely functional features, provided that the part concerned is original and is not otherwise excluded.  It is therefore often relied on by manufacturers as well as fashion designers.

At the end of last year, House of CB was awarded damages for Oh Polly’s flagrant copying of their bodycon and bandage style dresses.  With respect to non-fashion design right, it was held in 2016 that Action Storage’s design rights in the design of a plastic locker of the type used in schools were infringed by FECL and G-Force.  Design of the locker as a whole as well as the designs of the overall dimensions and proportions of the locker, the shape of the oval indentation, the shape of the side panel and the shape of the rear panel were held to be infringed.

How do you apply for a registered design?

Advantages of registering your design include long term protection (up to 25 years) and provision of an official record of your rights as design owner.  Once your design is registered, you will get a registration number which you can apply to your products to deter potential infringers.

A design application, or application for a registered design, must show what the design looks like.  This is done by submitting images, so called representations, of the design.

A registered design protects exactly what is shown in the representations filed.  If any alterations are made to the design, it is no longer covered by the registration. We would therefore not recommend applying for design protection before your design is finalised.  You can file EU wide Registered Community Designs or national registered designs, e.g., for Ireland alone.

When should the design application be filed?

In the EU and UK, designs may be disclosed up to 12 months prior to filing without invalidating a subsequent design registration.  This is not the case in all jurisdictions.  For example, in China absolute novelty is a requirement for registration.  It is therefore important that designs are filed prior to disclosure if protection in China is of interest.

Is it difficult to obtain a design registration?

Design applications are not examined for novelty or individual character.  Provided all formalities are in order, e.g., the representations comply with the regulations, designs are typically registered very quickly, sometimes in a matter of days.

If you need assistance with a design registration, please contact mail@maclachlan.ie and we would be pleased to assist you.