MACIPO & ASSOCIATES advises frequently on the protection of designs and on related copyright issues. We handle the filing and prosecution of Registered Design applications in the UK, the European Community and other overseas territories. We also advise in relation to the rights applicable to unregistered designs in the European Community and the UK.

Design protection is often of particular relevance in circumstances where patent protection is not available or may not provide very effective protection, and we are well-placed to advise on the relative strengths and weaknesses of any available patent protection and design protection in such cases.

With the changes in the registered design law in Europe effected in recent years, it is now possible to register a wide range of types of design in both the UK and the European Community. It may therefore be possible to supplement copyright protection and/or trade mark protection in graphically represented subject matter, by means of Registered Design Protection.

We are able to file registered design applications in the UK and across Europe as a single application. We also file registered design applications elsewhere in the world through our network of foreign design attorney firms.

Designs protect the shape and appearance of a range of products ranging from artistic works such as sculptures, industrial products, furniture items, consumer goods, automotive components, furniture, building structures, clothing items, and packaging. Almost any product which incorporates some element of original design is potentially protectable by designs law.

UK DESIGN REGISTRATION

Registration is available for two or three-dimensional features of a design and which can relate to an article or a part of an article. The design must have "individual character" insofar as, for the informed user, the design must produce a different overall impression from earlier designs. Once accepted by the UK Designs Registry, a design registration remains in force for 5 years from its date of registration and the term of protection can be extended for 4 further terms each of 5 years upon payment of appropriate renewal fees. As with patent protection, the novelty requirement is absolute, i.e. the novelty of an application for UK design registration is judged against what was publicly available anywhere in the world at the time of filing the application for registration.

There is however an exception for disclosures made by the designer within the 12 month period preceding the filing of the application. This 12 month "grace period" therefore allows for some degree of prior publication by the designer without fear of invalidating a later filed design registration.

In order to put an application on file at the UK Designs Registry and establish a filing date we need the following:

• Full name, address and nationality of applicant (s);
• Clear representation of the article bearing the design to be protected;
• Confirmation as to whether it is the features of the shape and configuration, i.e. generally three-dimensional features of the article, or features of pattern and ornament as applied to the article, i.e. features of surface decoration, or both, that are to be protected;
• Number, country and date of priority application (if applicable).

In due course, to complete the filing requirements we will need:

• Certified copy of priority document and English translation (if applicable);
• Confirmation of assignment details if intended applicant of the application is different from the applicant identified on the priority application (if applicable).