The handout for my talk on IP for Startups and other Small Businesses at the Beacon Enterprise Centre in Llanelli on 22 March 2019

1. Registered Designs
Jane Lambert1
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 design”​), that is ​new ​and
has​ individual character​ may be registered for the UK alone under the provisions of the Registered Designs Act
1949 as a ​registered design​, or, for the whole European Union (including for the time being the UK) under the
provisions of the Community design regulation as a ​registered Community design​ (​“RCD”​).
Effect of Registration
The registration of a design gives the registered proprietor the exclusive right to use the design and any design
that does not produce on the informed user a different overall impression. “Use” for these purposes includes:
● making, offering, putting on the market, importing, exporting or using of a product in which the design is
incorporated or to which it is applied; or
● stocking such a product for those purpose.
Designs that could have been registered under the Act or Regulation enjoy up to 3 years protection from copying
throughout the EU as ​unregistered Community designs ​(​“UCD”​),
Infringement
The right in a registered design is infringed by doing does anything that is the exclusive right of the registered
proprietor.
Novelty
A design is ​new​ if no identical design or no design whose features differ only in immaterial details has been made
available to the public.
1
Barrister, 4-5 Gray’s Inn Square, London, WC1R 5AH, Tel 020 7404 5252, jane.lambert@nipclaw.com
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2. Individual Character
A design has i​ndividual characte​r if the overall impression it produces on the informed user differs from the
overall impression produced on such a user by any design which has been made available to the public.
Registration
Applications for registration under the Registered Designs Act 1949 are made to the Intellectual Property Office in
Newport. Applications for registration under the Community design regulation are made to the European Union
Intellectual Property Office in Alicante.
Applications
Applications can be made in writing on online using prescribed forms requiring the applicant’s name and address
and particulars of the design. There is no examination for novelty or individual character but the application will
be checked for compliance with the formalities. If all appears to be in order the design will be registered and the
applicant will receive a certificate of grant.
Term
Designs are registered for 5 renewable periods of 5 years each.
Enforcement
Infringement proceedings are brought in the the Patents Court or the Intellectual Property Enterprise Court
(​“IPEC”​). Deliberate copying of a registered design is now an offence in the UK.
Invalidity
Registrations may be declared invalid if the design should not have been registered in the first place either
because it lacked novelty or individual character, was granted to the wrong person or otherwise. Applications for
declarations of invalidity can be made to the IPO or, as the case may, be EUIPO or by way of counterclaim in
infringement proceedings.
Threats
Registered design owners should be careful when communicating with suspected infringers because ​ ​they can
be sued for threatening infringement proceedings unless the threat is justified.
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3. Legislation
Registered Designs Act 1949 assets.publishing.service.gov.uk/government/uploads
/system/uploads/attachment_data/file/737827/Registe
red_Designs_Act_1949.pdf
Registered Designs Rules 2006 assets.publishing.service.gov.uk/government/uploads
/system/uploads/attachment_data/file/737829/Consoli
dated_Design_Rules.pdf
Community Design Regulation euipo.europa.eu/tunnel-web/secure/webdav/guest/do
cument_library/contentPdfs/law_and_practice/cdr_leg
al_basis/62002_cv_en.pdf
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