THE REGISTRATION OF DESIGNS
4. Designs can be as diverse as works of art and
graphic designs and, at the other extreme, the shape and appearance
of functional objects such as umbrellas and machines. A design
is defined by section 1(2) of the 1949 Act as:
The appearance of the whole or 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.
5. A registered design provides the proprietor with
an exclusive right to use the design and any other design which
does not create a different overall impression. It gives the right
to take legal action against others who might be infringing the
design and to claim damages. It is a property right which can
be bought or sold like any other property. However, the validity
of a registered design can be challenged at any time. Although
registration of designs is typically used by larger enterprises,
the Patent Office points out that registration has also become
increasingly popular with small and medium sized enterprises,
many of which are without legal representation. UK businesses
register and protect fewer designs than some of their competitors
in other countries, including France and Germany.
6. Designs can be registered under national schemes,
such as in the UK at the Patent Office, or under the EU registration
scheme at the Community Design Office in Alicante.[3]
The EU scheme provides similar rights to a national registered
design, except that a Community design is a unitary right covering
the whole of the European Community. According to the Patent Office
the cost of registration for a single Community design is €350
(about £240) against just £60 for a UK registration.
The higher cost for EU registration may discourage some small
businesses from registering their new designs throughout the EU.
But, as the Patent Offices points out, a national registration
would make it easier for these companies to enforce their rights,
at least in the UK, and would also create grounds for invalidation
if the same design is later registered by a third party as a Community
design.
7. Since 2003, when the Community registration system
was introduced, the Patent Office has recorded a 60% fall in the
number of UK national applications for registration. However,
as the Patent Office makes clear, it is not its aim to win business
at the expense of the EU Community system since there would be
no benefit in encouraging domestic registration as an alternative
to EU registration. Both systems operate in tandem. For example,
the Patent Office provides information and advice to businesses
about the EU Community system of registration, which is expected
to feature just as prominently in the new guidance to the public
as now. [4]
The Patent Office told us that its aim is to offer an easy
and affordable registration option to those businesses that currently
do not register their designs and/or whose business is such that
they are unlikely to need to assert their design rights outside
the UK.
CASE FOR MODERNISING THE UK SYSTEM
8. Compared with the UK national system, the Community
system is perceived as providing a more modern and liberal approach
to registration procedures. The need to modernise the procedures
for governing the UK national system, specifically the 1949 Act,
has become increasingly obvious since the Community Design Regulations
came into force in 2002.
9. The Patent Office states that the proposed amendments
to the 1949 Act are required to provide similar flexibility in
the domestic legislation as that provided by the EU registration
system. It suggests that making UK registration easier would encourage
innovation and enhance the competitiveness of UK businesses. The
Patent Office identifies a number of benefits of the new system
to UK businesses: it would remove any misunderstanding in the
market place about whether new designs have been assessed for
novelty prior to registration; it would be quicker, easier and
cheaper; and should reduce the incidence of inadvertent infringement
by encouraging designs to be registered. In response to our question,
the Patent Office stated:
The proposals for a new streamlined registration
system are aimed at encouraging small businesses to register their
designs. That way more small businesses will be able to enforce
their legitimate rights more easily, both against later registrants
of the same design (whether at the national or Community level)
and, just as importantly, against those who are commercially exploiting
their designs without their consent.[5]
10. Some of the suggested benefits of the revised
registration system also require amendments to the Registered
Designs Rules which are made under section 36 of the 1949 Act
and govern the various administrative and procedural arrangements
for the registration of designs.[6]
The process for doing so is separate from the proposed Order.
The Patent Office has not yet published its summary of the Rules
consultation and proposes to amend the Rules at a later date.
2 The Minister will be responsible for deciding how
any Parliamentary representations should be reflected by changes
to the proposal, and for satisfying himself as to other matters
in section 1(1) of the Regulatory Reform Act 2001 ("the 2001
Act"). The explanatory statement provided by the Secretary
of State for Trade and Industry states that the consultation was
conducted by the Patent Office on behalf of the Minister. Back
3
Designs can be registered as a Community design under Council
Regulation on Community Designs (EC) No.6 of 2002 (the Community
Design Regulations). Back
4
For example, the Patent Office provides a downloadable booklets
entitled "How to apply to register a UK design" and
"How to apply for a registered Community design" as
well as other information on registered and unregistered designs
in both the UK and the Community. Back
5
Appendix B, Question 7 Back
6
These changes were subject to consultation in tandem with the
RRO proposal. Back
