UK registered designs and the 12 month novelty grace period – knowing the limits as to when it can be validly applied: In respect of the UK design registration system, one of its redeeming qualities is the provision of a novelty grace period to discount against certain disclosures, made in the preceding 12 months before the effective priority date of a UK registered design, from being used to invalidate the design registration.
In principal, the purpose of this novelty grace period is to allow the owner of a given design to try it out on the market, to see whether or not it proves to be a commercial success, such to give the owner a 12 month window in which to decide whether or not to seek corresponding UK design registration protection.
Mindful of the above, it is to be noted that the novelty grace period does not protect against all disclosures which might be made in this preceding 12 month window. In that respect, the novelty grace period solely covers disclosures in the 12 month window which are made:
- by the designer, or their successor in title, of the design subject to the UK design registration;
- by a person other than the designer, or their successor in title, and which are made in consequence of information provided or other action taken by the designer or their successor in title; or
- as a consequence of an abuse in relation to the designer or their successor in title.
Accordingly for a disclosure not falling within the above criteria; for instance the disclosure of an otherwise similar design made by a third party prior to the UK design registration, and which was made without knowledge of the design from the UK design registration, such a disclosure may not be covered by the novelty grace period, and could therefore be prejudicial to the validity of the UK design registration.
Another point to note in respect of the novelty grace period is that in the event of a dispute, the initial onus is on the owner of the UK registered design to demonstrate why the novelty grace period is applicable to any given disclosure(s) occurring prior to the date of the UK design registration. In practice, demonstrating that a given disclosure is ultimately attributable to one of the above three criterion may well prove onerous.
It is also to be noted that for any third party which might happen to independently, and in good faith, commercialise a given design during the novelty grace period (that is, through no copying of the design which was ultimately the subject of the UK registered design), the third party may acquire a right of "prior use" to maintain their existing activities even after the date when the UK design registration is obtained. In other words, the UK registered design in these instances may not be validly enforceable against the third party in respect of at least some of their future activities.
Conscious of the above limitations therefore, it is to be noted that the novelty grace period in respect of UK registered designs, although helpful in many instances, should not wherever possible be relied upon as a matter of routine. This is particularly so, noting as well that other territories outside the UK (for example, China) do not implement a novelty grace period in respect of registered designs. As such, relying on the novelty grace period for any initial UK registered design may preclude obtaining corresponding design registration protection in other territories outside the UK which do not operate a novelty grace period.
To place the above into context, an example of an entity falling foul of the above novelty grace period provisions can be seen in the recent appeal decision O-062-20, where a UK registered design was deemed invalid as a result of a disclosure made six days before the filing date of the UK registered design. In this case, the owner of the registered design sought reliance on the novelty grace period to discount the prior disclosure from impacting the validity of the UK registered design. However, in the appeal decision, the prior disclosure was not deemed to fall within the above i)-iii) criteria for when the novelty grace period can be validly applied. As such, the prior disclosure was found to be citeable as prior art against the UK registered design, such that the design registration was ultimately held to be invalid through lack of novelty on the basis of this earlier disclosure.
In summary, the novelty grace period provided by the UK registered design system is a particularly useful asset, and certainly has its advantages in allowing for valid UK registered design protection to be obtained in instances where such protection might not otherwise be available. However, the grace period should be handled with caution, and not relied upon as a matter of course.